37 C.F.R. 1.52 Language, paper, writing, margins, compact disc specifications.

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1. (e) Electronic documents that are to become part of the permanent United States Patent and Trademark Office records in the file of a patent application or reexamination proceeding.
   1. (1) The following documents may be submitted to the Office on a compact disc in compliance with this paragraph:
      1. (i) A computer program listing (see § 1.96 );
      2. (ii) A "Sequence Listing" (submitted under § 1.821(c)); or
      3. (iii) Any individual table (see § 1.58 ) if the table is more than 50 pages in length, or if the total number of pages of all of the tables in an application exceeds 100 pages in length, where a table page is a page printed on paper in conformance with paragraph (b) of this section and §1.58 (c).
   2. (2) A compact disc as used in this part means a Compact Disc-Read Only Memory (CD-ROM) or a Compact Disc-Recordable (CD-R) in compliance with this paragraph. A CD-ROM is a "read-only" medium on which the data is pressed into the disc so that it cannot be changed or erased. A CD-R is a "write once" medium on which once the data is recorded, it is permanent and cannot be changed or erased.
   3. (3)
      1. (i) Each compact disc must conform to the International Standards Organization (ISO) 9660 standard, and the contents of each compact disc must be in compliance with the American Standard Code for Information Interchange (ASCII). CD-R discs must be finalized so that they are closed to further writing to the CD-R.
      2. (ii) Each compact disc must be enclosed in a hard compact disc case within an unsealed padded and protective mailing envelope and accompanied by a transmittal letter on paper in accordance with paragraph (a) of this section. The transmittal letter must list for each compact disc the machine format (e.g., IBM-PC, Macintosh), the operating system compatibility (e.g., MS-DOS, MS-Windows, Macintosh, Unix), a list of files contained on the compact disc including their names, sizes in bytes, and dates of creation, plus any other special information that is necessary to identify, maintain, and interpret (e.g., tables in landscape orientation should be identified as landscape orientation or be identified when inquired about) the information on the compact disc. Compact discs submitted to the Office will not be returned to the applicant.
   4. (4) Any compact disc must be submitted in duplicate unless it contains only the "Sequence Listing" in computer readable form required by § 1.821(e). The compact disc and duplicate copy must be labeled "Copy 1" and "Copy 2," respectively. The transmittal letter which accompanies the compact disc must include a statement that the two compact discs are identical. In the event that the two compact discs are not identical, the Office will use the compact disc labeled "Copy 1" for further processing. Any amendment to the information on a compact disc must be by way of a replacement compact disc in compliance with this paragraph containing the substitute information, and must be accompanied by a statement that the replacement compact disc contains no new matter. The compact disc and copy must be labeled "COPY 1 REPLACEMENT MM/DD/YYYY" (with the month, day and year of creation indicated), and "COPY 2 REPLACEMENT MM/DD/YYYY," respectively.
   5. (5) The specification must contain an incorporation-by-reference of the material on the compact disc in a separate paragraph (§ 1.77(b)(5)), identifying each compact disc by the names of the files contained on each of the compact discs, their date of creation and their sizes in bytes. The Office may require applicant to amend the specification to include in the paper portion any part of the specification previously submitted on compact disc.
   6. (6) A compact disc must also be labeled with the following information:
      1. (i) The name of each inventor (if known);
      2. (ii) Title of the invention;
      3. (iii) The docket number, or application number if known, used by the person filing the application to identify the application; and
      4. (iv) A creation date of the compact disc.
      5. (v) If multiple compact discs are submitted, the label shall indicate their order (e.g. "1 of X").
      6. (vi) An indication that the disk is "Copy 1" or "Copy 2" of the submission. See paragraph (b)(4) of this section.
   7. (7) If a file is unreadable on both copies of the disc, the unreadable file will be treated as not having been submitted. A file is unreadable if, for example, it is of a format that does not comply with the requirements of paragraph (e)(3) of this section, it is corrupted by a computer virus, or it is written onto a defective compact disc.
2. (f)
   1. (1) Any sequence listing in an electronic medium in compliance with §§1.52 (e) and 1.821 (c) or (e), and any computer program listing filed in an electronic medium in compliance with §§ 1.52(e) and 1.96, will be excluded when determining the application size fee required by §1.16 (s) or §1.492 (j). For purposes of determining the application size fee required by §1.16 (s) or §1.492 (j), for an application the specification and drawings of which, excluding any sequence listing in compliance with §1.821 (c) or (e), and any computer program listing filed in an electronic medium in compliance with §§ 1.52 (e) and 1.96, are submitted in whole or in part on an electronic medium other than the Office electronic filing system, each three kilobytes of content submitted on an electronic medium shall be counted as a sheet of paper.
   2. (2) Except as otherwise provided in this paragraph, the paper size equivalent of the specification and drawings of an application submitted via the Office electronic filing system will be considered to be the number of sheets of paper present in the specification and drawings of the application when entered into the Office file wrapper after being rendered by the Office electronic filing system for purposes of computing the application size fee required by § 1.16 (s). Any sequence listing in compliance with § 1.821 (c) or (e), and any computer program listing in compliance with § 1.96, submitted via the Office electronic filing system will be excluded when determining the application size fee required by § 1.16 (s) if the listing is submitted in ACSII text as part of an associated file.

37 C.F.R. 1.77 Arrangement of application elements.

1. (a) The elements of the application, if applicable, should appear in the following order:
   1. (1) Utility application transmittal form.
   2. (2) Fee transmittal form.
   3. (3) Application data sheet (see § 1.76 ).
   4. (4) Specification.
   5. (5) Drawings.
   6. (6) Executed oath or declaration.
2. (b) The specification should include the following sections in order:
   1. (1) Title of the invention, which may be accompanied by an introductory portion stating the name, citizenship, and residence of the applicant (unless included in the application data sheet).
   2. (2) Cross-reference to related applications (unless included in the application data sheet).
   3. (3) Statement regarding federally sponsored research or development.
   4. (4) The names of the parties to a joint research agreement.
   5. (5) Reference to a "Sequence Listing," a table, or a computer program listing appendix submitted on a compact disc and an incorporation-by-reference of the material on the compact disc (see § 1.52(e)(5)). The total number of compact discs including duplicates and the files on each compact disc shall be specified.
   6. (6) Background of the invention.
   7. (7) Brief summary of the invention.
   8. (8) Brief description of the several views of the drawing.
   9. (9) Detailed description of the invention.
   10. (10) A claim or claims.
   11. (11) Abstract of the disclosure.
   12. (12) "Sequence Listing," if on paper (see §§ 1.821 through 1.825 ).
3. (c) The text of the specification sections defined in paragraphs (b)(1) through (b)(12) of this section, if applicable, should be preceded by a section heading in uppercase and without underlining or bold type.

Special procedures for the presentation of large tables, computer program listings and certain biosequences on compact discs are set forth in 37 CFR 1.52(e). Use of compact discs is desirable in view of the lengthy data listings being submitted as part of the disclosure in some patent applications. Such listings are often several hundred pages or more in length. By filing and publishing such data listings on compact disc rather than on paper, substantial cost savings can result to the applicants, the public, and the U.S. Patent and Trademark Office.

BACKGROUND

A compact disc submitted under 37 CFR 1.52(e) must either be a CD-ROM or a CD-R. A CD-ROM is made by a process of pressing the disc from a master template; the data cannot be erased or rewritten. A CD-R is a compact disc that has a recording medium only capable of writing once. CD-RW type media which are erasable and rewriteable are not acceptable. Limiting the media types to CD-ROM and CD-R media will ensure the longevity and integrity of the data submitted. CD-R discs must be finalized so that they are closed to further writing to the CD-R. The files stored on the compact disc must contain only ASCII characters. No non-ASCII characters or proprietary file formats are permitted. A text viewer is recommended for viewing ASCII files. While virtually any word processor may be used to view an ASCII file, care must be taken since a word processor will often not distinguish ASCII and non-ASCII files when displayed. For example, a word processor normally does not display hidden proprietary non-ASCII characters used for formatting when viewing a non-ASCII word processor file.

Compact disc(s) filed on the date that the application was accorded a filing date are to be treated as part of the originally filed disclosure even if the requisite "incorporation by reference" statement (see 37 CFR 1.77(b)(5) ) is omitted. Similarly, if a preliminary amendment that accompanies the application when it is filed in the Office is identified in the oath or declaration, and the preliminary amendment includes compact disc(s), the compact disc(s) will be treated as part of the original disclosure. The compact disc(s) is considered part of the original disclosure by virtue of its inclusion with the application on the date the application is accorded a filing date. The incorporation by reference statement of the material on the compact disc is required to be part of the specification to allow the Office the option of separately printing the material on compact disc. The examiner should require applicant(s) to insert this statement if it is omitted or the examiner may insert the statement by examiner’s amendment at the time of allowance.

37 CFR 1.52(e)(3)(ii) requires that each compact disc must be enclosed in a hard compact disc case within an unsealed padded and protective mailing envelope and accompanied by a transmittal letter on paper in accordance with 37 CFR 1.52(a). The transmittal letter must list for each compact disc the machine format (e.g., IBM-PC, Macintosh), the operating system compatibility (e.g., MS-DOS, MS-Windows, Macintosh, Unix), a list of files contained on the compact disc including their names, sizes in bytes, and dates of creation, plus any other special information that is necessary to identify, maintain, and interpret the information on the compact disc. Compact discs submitted to the Office will not be returned to the applicant.

All compact discs submitted under 37 CFR 1.52(e) must be submitted in duplicate labeled as "copy 1" and "copy 2" respectively. If more than one compact disc is required to hold all of the information, each compact disc must be submitted in duplicate to form two sets of discs: one set labeled "copy 1" and a second set labeled "copy 2." Both disc copies should initially be routed to the Office of Patent Application Processing (OPAP). The compact discs will be checked by OPAP for viruses, readability, the presence of non-ASCII files, and compliance with the file and disc labeling requirements. OPAP will retain one copy of the discs and place the other copy in a holder fastened into the application file jacket. For Image File Wrapper (IFW) processing, see IFW Manual sections 2.2 and 3.6. In the event that there is not a complete set of files on both copies of the originally filed discs, OPAP will retain the originally filed discs and send a notice to the applicant to submit an additional complete copy. For provisional applications, OPAP will provide applicant notification and, where appropriate, require correction for virus infected compact discs, unreadable compact discs (or unreadable files thereon), and missing duplicate discs. An amendment to the material on a compact disc must be done by submitting a replacement compact disc with the amended file(s). The amendment should include a corresponding amendment to the description of the compact disc and the files contained on the compact disc in the paper portion of the specification. A replacement compact disc containing the amended files must contain all of the files of the original compact disc that were not amended. This will insure that the Office, printer, and public can quickly access all of the current files in an application or patent by referencing only the latest set of compact discs.

Compact discs should be stored in the compact disc holder provided in each application file. The compact discs, especially the non-label side, should not be scratched, marked or otherwise altered or deformed. Compact discs and application files containing compact discs should not be stored in areas exposed to heat and humidity that might damage the discs.

If a compact disc becomes damaged or lost from the file wrapper, OPAP will make a duplicate replacement copy of the disc from the copy retained in OPAP. At time of allowance, if a replacement disc is required, the application file and replacement request should be forwarded to OPAP to provide the replacement disc.

Examiners may view the files on the application compact disc using virtually any text reader or the MS Word word processor software installed on their workstation. Special text viewing software will be provided on examiner workstations in Technology Centers that receive ASCII files that are not readily readable using the MS Word word processor software.

The following form paragraphs may be used to notify applicant of corrections needed with respect to compact disc submissions.

This application is objected to under 37 CFR 1.52(e)(4) because it does not contain a statement in the transmittal letter that the two compact discs are identical. Correction is required.

This application is objected to because it contains a data file on CD-ROM/CD-R, however, the transmittal letter does not list for each compact disc, the machine format, the operating system compatibility, a list of files contained on the compact disc including their names, sizes in bytes, and dates of creation, plus any other special information that is necessary to identify, maintain, and interpret the information on the compact disc as required by 37 CFR 1.52(e)(3). A statement listing the required information is required.

Portions of this application are contained on compact disc(s). When portions of an application are contained on a compact disc, the paper portion of the specification must identify the compact disc(s) and list the files including name, file size, and creation date on each of the compact discs. See 37 CFR 1.52(e). Compact disc labeled[1] is not identified in the paper portion of the specification with a listing of all of the files contained on the disc. Applicant is required to amend the specification to identify each disc and the files contained on each disc including the file name, file size, and file creation date.

Examiner Note:

In bracket 1, insert the name on the label of the compact disc.

This application contains compact disc(s) as part of the originally filed subject matter, but does not contain an incorporation by reference statement for the compact discs. See 37 CFR 1.77(b)(4). Applicant(s) are required to insert in the specification an incorporation-by-reference of the material on the compact disc(s).

This application contains a data file on CD-ROM/CD-R that is not in an ASCII file format. See 37 CFR 1.52(e). File [1] is not in an ASCII format. Applicant is required to resubmit file(s) in ASCII format. No new matter may be introduced in presenting the file(s) in ASCII format.

Examiner Note:

1. This form paragraph must be used to indicate whenever a data file (table, computer program listing or Sequence Listing) is submitted in a non-ASCII file format. The file may be in a file format that is proprietary, e.g., a Microsoft Word, Excel or Word Perfect file format; and/or the file may contain non-ASCII characters.

2. In bracket 1, insert the name of the file and whether the file is a non-text proprietary file format and/or contains non-ASCII characters.

The following form paragraphs should be used to respond to amendments which include amended or substituted compact discs.

The amendment filed [1] is objected to under 37 CFR 1.52(e)(4) because it does not contain a statement in the transmittal letter that the two compact discs are identical. Correction is required.

The amendment filed [1] contains data on compact disc(s). Compact disc labeled [2] is not identified in the transmittal letter and/or the transmittal letter does not list for each compact disc, the machine format, the operating system compatibility, a list of files contained on the compact disc including their names, sizes in bytes, and dates of creation, plus any other special information that is necessary to identify, maintain, and interpret the information on the compact disc as required by 37 CFR 1.52(e)(3). A statement listing the required information is required.

Examiner Note:

1. Use this form paragraph when the transmittal letter does not include a listing of the files and required information.

2. In bracket 1, insert the date of the amendment.

3. In bracket 2, insert the name on the label of the compact disc.

The amendment filed [1] contains data on compact disc(s). Compact disc labeled [2] is not identified in the paper portion of the specification with a listing of all of the files contained on the disc. Applicant is required to amend the specification to identify each disc and the files contained on each disc including the file name, file size, and file creation date. See 37 CFR 1.52(e).

Examiner Note:

1. In bracket 1, insert the date of the amendment.

2. In bracket 2, insert the name on the label of the compact disc.

The amendment filed [1] amends or adds a compact disc(s). See 37 CFR 1.77(b)(4) and 1.52(e)(5). Applicant is required to update or insert an incorporation-by-reference of the material on the compact disc(s) in the specification.

Examiner Note:

1. Use this form paragraph when the CD-ROM/CD-R is filed with an amendment, but the required incorporation-by-reference statement is neither amended nor added to the specification.

2. In bracket 1, insert the date of the amendment.

The amendment filed [1] is objected to under 37 CFR 1.52(e)(4) because the two compact discs are not identical. Correction is required.

Examiner Note:

1. Use this form paragraph when the two compact discs are not identical.

2. See also form paragraph 6.70.01 where the transmittal letter does not include a statement that the two compact discs are identical.

The amendment filed [1] contains a data file on CD-ROM/CD-R that is not in an ASCII file format. File [2] is not in an ASCII format. Applicant is required to resubmit file(s) in ASCII format as required by 37 CFR 1.52(e)(3). No new matter may be introduced in presenting the file(s) in ASCII format.

Examiner Note:

1. This form paragraph must be used whenever a data file (table, computer program listing or Sequence Listing) is submitted in a non-ASCII file format. The file may be in a file format that is proprietary, e.g., a Microsoft Word, Excel or Word Perfect file format; and/or the file contains non-ASCII characters.

2. In bracket 1, insert the date of the amendment.

3. In bracket 2, insert the name of the file and whether the file is a non-text proprietary file format and/or contains non-ASCII characters.

The amendment filed [1] contains a data file on CD-ROM/CD-R that is unreadable. Applicant is required to resubmit the file(s) in International Standards Organization (ISO) 9660 standard and American Standard Code for Information Interchange (ASCII) format as required by 37 CFR 1.52(e)(3). No new matter may be introduced in presenting the file in ISO 9660 and ASCII format.

The amendment filed [1] is objected to because the compact disc contains at least one virus. Correction is required.

The amendment to the application filed [1] is objected to because the newly submitted compact disc(s) do not contain all of the unamended data file(s) together with the amended data file(s) that were on the CD-ROM/CD-R. Since amendments to a compact disc can only be made by providing a replacement compact disc, the replacement disc must include all of the files, both amended and unamended, to be a complete replacement.

Examiner Note:

Use this form paragraph when a replacement compact disc is submitted that fails to include all of the files on the original compact disc(s) that have not been cancelled by amendment.

37 C.F.R. 1.96 Submission of computer program listings.

1. (a) General. Descriptions of the operation and general content of computer program listings should appear in the description portion of the specification. A computer program listing for the purpose of this section is defined as a printout that lists in appropriate sequence the instructions, routines, and other contents of a program for a computer. The program listing may be either in machine or machine-independent (object or source) language which will cause a computer to perform a desired procedure or task such as solve a problem, regulate the flow of work in a computer, or control or monitor events. Computer program listings may be submitted in patent applications as set forth in paragraphs (b) and (c) of this section.
2. (b) Material which will be printed in the patent: If the computer program listing is contained in 300 lines or fewer, with each line of 72 characters or fewer, it may be submitted either as drawings or as part of the specification.
   1. (1) Drawings. If the listing is submitted as drawings, it must be submitted in the manner and complying with the requirements for drawings as provided in § 1.84. At least one figure numeral is required on each sheet of drawing.
   2. (2) Specification.
      1. (i) If the listing is submitted as part of the specification, it must be submitted in accordance with the provisions of § 1.52.
      2. (ii) Any listing having more than 60 lines of code that is submitted as part of the specification must be positioned at the end of the description but before the claims. Any amendment must be made by way of submission of a substitute sheet.
3. (c) As an appendix which will not be printed: Any computer program listing may, and any computer program listing having over 300 lines (up to 72 characters per line) must, be submitted on a compact disc in compliance with § 1.52(e). A compact disc containing such a computer program listing is to be referred to as a "computer program listing appendix." The "computer program listing appendix" will not be part of the printed patent. The specification must include a reference to the "computer program listing appendix" at the location indicated in § 1.77(b)(5).
   1. (1) Multiple computer program listings for a single application may be placed on a single compact disc. Multiple compact discs may be submitted for a single application if necessary. A separate compact disc is required for each application containing a computer program listing that must be submitted on a "computer program listing appendix."
   2. (2) The "computer program listing appendix" must be submitted on a compact disc that complies with § 1.52(e) and the following specifications (no other format shall be allowed):
      1. (i) Computer Compatibility: IBM PC/XT/AT, or compatibles, or Apple Macintosh;
      2. (ii) Operating System Compatibility: MS-DOS, MS-Windows, Unix, or Macintosh;
      3. (iii) Line Terminator: ASCII Carriage Return plus ASCII Line Feed;
      4. (iv) Control Codes: the data must not be dependent on control characters or codes which are not defined in the ASCII character set; and
      5. (v) Compression: uncompressed data.

Special procedures for presentation of computer program listings in the form of compact disc files in U.S. national patent applications are set forth in 37 CFR 1.96. Use of compact disc files is desirable in view of the number of computer program listings being submitted as part of the disclosure in patent applications. Such listings are often several hundred pages in length. By filing and publishing such computer program listings on compact discs rather than on paper, substantial cost savings can result to the applicants, the public, and the U.S. Patent and Trademark Office.

I. BACKGROUND

A computer program listing, as used in these rules, means the printout that lists, in proper sequence, the instructions, routines, and other contents of a program for a computer. The listing may be either in machine or machine-independent (object or source) programming language which will cause a computer to perform a desired task, such as solving a problem, regulating the flow of work in computer, or controlling or monitoring events. The general description of the computer program listing will appear in the specification while the computer program listing may appear either directly or as a computer program listing on compact disc appendix to the specification and be incorporated into the specification by reference.

Copies of publicly available computer program listings are available from the U.S. Patent and Trademark Office on paper and on compact disc at the cost set forth in 37 CFR 1.19(a).

II. DISCUSSION OF THE BACKGROUND AND MAJOR ISSUES INVOLVED

The provisions of 37 CFR 1.52 and 37 CFR 1.84 for submitting specifications and drawings on paper have been found suitable for most patent applications. However, when lengthy computer program listings must be disclosed in a patent application in order to provide a complete disclosure, use of paper copies can become burdensome. The cost of printing long computer programs in patent documents is also very expensive to the U.S. Patent and Trademark Office. Under 37 CFR 1.96, several different methods for submitting computer program listings, including the use of compact discs, are set forth. A computer program listing contained on three hundred printout lines or less may be submitted either as drawings (in compliance with 37 CFR 1.84 ), as part of the written specification (in compliance with 37 CFR 1.52 ), or on compact disc (in compliance with 37 CFR 1.52(e) ). A computer program listing contained on three hundred and one (301) printout lines or more must be submitted as ASCII files on compact discs (in compliance with 37 CFR 1.96(c) ).

Form paragraphs 6.64.01 through 6.64.03 may be used to notify the applicant of this requirement.

The description portion of this application contains a computer program listing consisting of more than three hundred (300) lines. In accordance with 37 CFR 1.96(c), a computer program listing of more than three hundred lines must be submitted as a computer program listing appendix on compact disc conforming to the standards set forth in 37 CFR 1.96(c)(2) and must be appropriately referenced in the specification (see 37 CFR 1.77(b)(5) ). Accordingly, applicant is required to cancel the computer program listing appearing in the specification on pages [1], file a computer program listing appendix on compact disc in compliance with 37 CFR 1.96(c), and insert an appropriate reference to the newly added computer program listing appendix on compact disc at the beginning of the specification.

Examiner Note:

1. This form paragraph must be used whenever a computer program listing consisting of more than three hundred lines is included as part of the descriptive portion of the specification if the computer program listing was filed on or after September 8, 2000. See MPEP § 608.05(a).

2. In bracket 1, insert the range of page numbers of the specification which include the computer program listing.

This application contains a computer program listing of over sixty (60) lines and less than three hundred and one (301) lines within the written specification. In accordance with 37 CFR 1.96(b), a computer program listing contained on over sixty (60) lines and less than three hundred-one (301) lines must, if submitted as part of the specification, be positioned at the end of the specification and before the claims. Accordingly, applicant is required to cancel the computer program listing and either incorporate such listing in a compact disc in compliance with 37 CFR 1.96, or insert the computer program listing after the detailed description of the invention but before the claims, in the form of direct printouts from a computer’s printer with dark solid black letters not less than 0.21 cm. high, on white, unshaded and unlined paper.

Examiner Note:

This form paragraph must be used whenever a computer program listing consisting of a paper printout of more than 60 lines and no more than three hundred lines is included as part of the descriptive portion of the specification and the computer program listing was filed on or after September 8, 2000. See MPEP § 608.05(a).

This application contains a computer program listing of more than three hundred (300) lines. In accordance with 37 CFR 1.96 (c), a computer program listing contained on more than three hundred (300) lines must be submitted as a computer program listing appendix on compact disc conforming to the standards set forth in 37 CFR 1.96 (c)(2) and must be appropriately referenced in the specification (see 37 CFR 1.77 (b)(5)). Accordingly, applicant is required to cancel the current computer program listing, file a computer program listing appendix on compact disc in compliance with 37 CFR 1.96 (c), and insert an appropriate reference to the newly added computer program listing appendix on compact disc at the beginning of the specification.

Examiner Note:

This form paragraph must be used whenever a computer program listing consisting of a paper printout of more than three hundred lines is filed on or after September 8, 2000.

A computer program listing of more than three hundred lines will not be printed in any patent application publication, patent, or Statutory Invention Registration. See 37 CFR 1.96 (c).

III. OTHER INFORMATION

A computer program listing on compact disc filed with a patent application will be referred to as a Computer Program Listing Appendix on compact disc and will be identified as such on the front page of the patent but will not be part of the printed patent. "Computer Program Listing Appendix on compact disc" denotes the total computer program listing files contained on all compact discs. The face of the file wrapper will bear a label to denote that an appendix on compact disc is included in the application. A statement must be included in the specification to the effect that a computer program listing appendix on compact disc is included in the application. The specification entry must appear at the beginning of the specification immediately following any cross-reference to related applications. 37 CFR 1.77(b)(5). When an application containing compact discs is received in the Office of Patent Application Processing (OPAP), a special envelope will be affixed to the right side of the file wrapper underneath all papers, and the compact discs inserted therein. For Image File Wrapper (IFW) processing, see IFW Manual section 3.6. The application file will then proceed on its normal course.

IV. TEMPORARY CONTINUATION OF MICROFICHE PRACTICE UNTIL MARCH 1, 2001

The Office provided for the continuation of prior microfiche appendix practice for computer listings until March 1, 2001. All computer listings as part of the application disclosure filed prior to March 2, 2001 that are in conformance with the microfiche appendix rules below may rely on the microfiche and need not submit a computer program listing appendix on compact disc; all computer listings as part of the application disclosure not in conformance with the microfiche appendix rules below must conform to the requirements of 37 CFR 1.52 and 37 CFR 1.96 as set forth above.

The prior microfiche practice continued through March 1, 2001 to accommodate applicants who incurred the time and expense of preparing microfiche. Those applicants with computer program listings in the disclosure who have not prepared microfiche will generally incur significantly less time and expense creating compact disc files than creating microfiche.

All computer listings submitted on microfiche through March 1, 2001, must conform to the requirements of former 37 CFR 1.96(c), as reproduced below:

Former 37 C.F.R. 1.96 Submission of computer program listings.

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1. (c) As an appendix which will not be printed. If a computer program listing printout is eleven or more pages long, applicants must submit such listing in the form of microfiche, referred to in the specification (see § 1.77(a)(6)). Such microfiche filed with a patent application is to be referred to as a "microfiche appendix." The "microfiche appendix" will not be part of the printed patent. Reference in the application to the "microfiche appendix" must be made at the beginning of the specification at the location indicated in § 1.77(a)(6). Any amendments thereto must be made by way of revised microfiche.
   1. (1) Availability of appendix. Such computer program listings on microfiche will be available to the public for inspection, and microfiche copies thereof will be available for purchase with the file wrapper and contents, after a patent based on such application is granted or the application is otherwise made publicly available.
   2. (2) Submission requirements. Except as modified or clarified in this paragraph (c)(2), computer-generated information submitted as a "microfiche appendix" to an application shall be in accordance with the standards set forth in 36 CFR Part 1230 (Micrographics).
      1. (i) Film submitted shall be a first generation (camera film) negative appearing microfiche (with emulsion on the back side of the film when viewed with the images right-reading).
      2. (iii) At least the left-most third (50 mm. x 12 mm.) of the header or title area of each microfiche submitted shall be clear or positive appearing so that the Patent and Trademark Office can apply an application number and filing date thereto in an eye-readable form. The middle portion of the header shall be used by applicant to apply an eye-readable application identification such as the title and/or the first inventor's name. The attorney's docket number may be included. The final right-hand portion of the microfiche shall contain sequence in formation for the microfiche, such as 1 of 4, 2 of 4, etc.
      3. (ii) Reduction ratio of microfiche submitted should be 24:1 or a similar ratio where variation from said ratio is required in order to fit the documents into the image area of the microfiche format used.
      4. (iv) Additional requirements which apply specifically to microfiche of filmed paper copy:
         1. (A) The first frame of each microfiche submitted shall contain a test target.
         2. (B) The second frame of each microfiche submitted must contain a fully descriptive title and the inventor's name as filed.
         3. (C) The pages or lines appearing on the microfiche frames should be consecutively numbered.
         4. (D) Pagination of the microfiche frames shall be from left to right and from top to bottom.
         5. (E) At a reduction of 24:1, resolution of the original microfilm shall be at least 120 lines per mm. (5.0 target).
         6. (F) An index, when included, should appear in the last frame (lower-right hand corner when data is right-reading) of each microfiche.
      5. (v) Microfiche generated by Computer Output Microfilm.
         1. (A) The first frame of each microfiche submitted should contain a resolution test frame.
         2. (B) The second frame of each microfiche submitted must contain a fully descriptive title and the inventor's name as filed.
         3. (C) The pages or lines appearing on the microfiche frames should be consecutively numbered.
         4. (D) It is preferred that pagination of the microfiche frames be from left to right and top to bottom but the alternative, i.e., from top to bottom and from left to right, is also acceptable.
         5. (E) An index, when included, should appear on the last frame (lower-right hand corner when data is right reading) of each microfiche.

*****

A microfiche filed with a patent application will be referred to as a "Microfiche Appendix," and will be identified as such on the front page of the patent but will not be part of the printed patent. "Microfiche Appendix" denotes the total microfiche, whether only one or two or more. One microfiche is equivalent to a maximum of either 63 (9x7) or 98 (14x7) frames (pages), or less. The face of the file wrapper will bear a label to denote that a Microfiche Appendix is included in the application. For IFW processing, see IFW Manual section 3.6. A statement must be included in the specification to the effect that a microfiche appendix is included in the application. The specification entry must appear at the beginning of the specification immediately following any cross-reference to related applications. When an application containing microfiche is received in the OPAP, a special envelope will be affixed to the right side of the file wrapper underneath all papers, and the microfiche inserted therein. For IFW processing, see IFW Manual section 2.2. The application file will then proceed on its normal course.

Form paragraph 6.64.04 may be used to notify applicant of an unacceptable microfiche appendix.

The computer program listing filed on [1] as a "microfiche appendix" is unacceptable. A computer program listing conforming to the requirements of 37 CFR 1.96 is required.

Examiner Note:

1. This form paragraph should be used if a "microfiche appendix" was filed after March 1, 2001 or if a "microfiche appendix" filed on or before March 1, 2001 was not in compliance with former rule 37 CFR 1.96 (c). See MPEP § 608.05(a).

2. In bracket 1, insert the date the "microfiche appendix" was filed.

37 C.F.R. 1.58 Chemical and mathematical formulae and tables.

*****

1. (b) Tables that are submitted in electronic form (§§ 1.96 (c) and1.821 (c)) must maintain the spatial relationships (e.g., alignment of columns and rows) of the table elements when displayed so as to visually preserve the relational information they convey. Chemical and mathematical formulae must be encoded to maintain the proper positioning of their characters when displayed in order to preserve their intended meaning.

*****

The provisions of 37 CFR 1.52 and 37 CFR 1.58 for submitting specifications and tables on paper have been found suitable for most patent applications. However, when lengthy tables must be disclosed in a patent application in order to provide a complete disclosure, use of paper copies can become burdensome. The cost of printing long tables in patent documents is also very expensive to the U.S. Patent and Trademark Office. In the past, all disclosures forming part of a patent application were presented on paper with the exception of microorganisms and computer program listings. Under 37 CFR 1.58, several different methods for submitting large tables, including the use of CD-ROM and CD-R, are set forth. If CD-R discs are used, 37 CFR 1.52 (e)(3)(i) requires that the CD-R discs to be finalized so that they are closed to further writing to the CD-R.

The files stored on the compact disc containing the table must contain only ASCII characters. No special formatting characters or proprietary file formats are permitted. Accordingly, great care must be taken so that the spatial arrangement of the data in rows and columns is maintained in the table when the file is opened for viewing at the Office. This will allow the table to viewed with virtually any text viewer. A single table contained on fifty pages or less must be submitted either as drawings (in compliance with 37 CFR 1.84 ) or as part of the specification in paper (in compliance with 37 CFR 1.52 ).

A single table contained on 51 pages or more, or if there are multiple tables in an application and the total number of pages of the tables exceeds one hundred pages, the tables may be submitted on a CD-ROM or CD-R (in compliance with 37 CFR 1.52(e) and 37 CFR 1.58 ). A table page is defined in 37 CFR 1.52 (e)(1)(iii) as a page printed on paper in conformance with 37 CFR 1.52 (b) and 1.58 (c). The presentation of a subheading to divide a large table into smaller sections of less than 51 pages should not be used to prevent an applicant from submitting the table on a compact disc unless the subdivided tables are presented as numerous files on the compact disc so as to lose their relationship to the overall large table.

Tables in landscape orientation should be identified as landscape orientation in the transmittal letter accompanying the compact disc to allow the Office to properly upload the tables into the Image File Wrapper (IFW) or other automated systems. 37 CFR 1.52 (e)(3)(ii). Most tables filed with patent applications are intended to be rendered in portrait mode. Accordingly, filings without an identification of landscape mode will be rendered as portrait mode tables by the Office.

If tables on more than two hundred consecutive pages, or large numbers of tables (lengthy tables) are submitted on a CD as provided in 37 CFR 1.52 (e), or in an electronic format in response to a specific request from the Office of Data Management, these lengthy tables will not be published as part of a patent document (e.g., patent, patent application publication or Statutory Invention Registration (SIR)). The lengthy tables will be published separately on the sequence homepage of the USPTO Internet web site (http://seqdata.uspto.gov) as an XML file. See, for example, patent application publication nos. US 2003/0235811 A1 and US 2003/0237110 A9.

When the lengthy tables are separately published on the USPTO Internet web site, there will be a standardized "Lengthy Table" statement, in the patent document following of the detailed description (see 37 CFR 1.77 (b)(8)).

For a patent application publication, the following page-wide text would appear:

LENGTHY TABLE

The patent application contains a lengthy table section. A copy of the table is available in electronic form from the USPTO web site (http://seqdata.uspto.gov/?pageRequest=docDetail&docID=20047654321). An electronic copy of the table will also be available from the USPTO upon request and payment of the fee set forth in 37 CFR 1.19 (b)(3).

For a patent, the following page-wide text would appear:

LENGTHY TABLE

The patent contains a lengthy table section. A copy of the table is available in electronic form from the USPTO web site (http://seqdata.uspto.gov/?pageRequest=docDetail&docID=7654321B1). An electronic copy of the table will also be available from the USPTO upon request and payment of the fee set forth in 37 CFR 1.19 (b)(3).

For a SIR, the following page-wide text would appear:

LENGTHY TABLE

The statutory invention registration contains a lengthy table section. A copy of the table is available in electronic form from the USPTO web site (http://seqdata.uspto.gov/?pageRequest=docDetail&docID=H0009999H1). An electronic copy of the table will also be available from the USPTO upon request and payment of the fee set forth in 37 CFR 1.19 (b)(3).

The Office discourages the embedding of a lengthy table in the specification of a patent application. If a lengthy table is embedded in the specification of a patent application, and if the lengthy table is available in an electronic form (either XML or a format convertible to XML), when the patent, patent application publication or SIR is published, the following single-column statement will be inserted in place of each replaced table in the document.

LENGTHY TABLE

Lengthy table referenced here. Please refer to the end of the specification for access instructions.

Form paragraphs 6.63.01 and 6.63.02 may be used to notify applicant of corrections needed to comply with the requirements of 37 CFR 1.52(e) and 37 CFR 1.58(b) with respect to tables.

The description portion of this application contains a table consisting of less than fifty one (51) pages only on a CD-ROM or CD-R. In accordance with 37 CFR 1.52(e ), only a table of at least fifty one (51) pages may be submitted on a CD-ROM or CD-R. Accordingly, applicant is required to cancel the references to the CD-ROM/CD-R table appearing in the specification on pages[1], file a paper version of the table in compliance with 37 CFR 1.52 and change all appropriate references to the former CD-ROM/CD-R table to the newly added paper version of the table in the remainder of the specification.

Examiner Note:

1. This form paragraph must be used whenever a table on a CD-ROM or CD-R consisting of less than fifty one (51) pages as part of the descriptive portion of the specification is filed on or after September 8, 2000. See MPEP § 608.05(b).

2. In bracket 1, insert the range of page numbers of the specification which reference the table.

This application contains a table on CD-ROM/CD-R. Tables presented on CD-ROM/CD-R in compliance with 37 CFR 1.58 must maintain the spatial orientation of the cell entries. The table submitted does not maintain the data within each table cell in its proper row/column alignment. The data is misaligned in the table as follows: [1]. Applicant is required to submit a replacement compact disc with the table data properly aligned.

Examiner Note:

1. This form paragraph must be used whenever the data in a table cannot be accurately read because the data in the table cells do not maintain their row and column alignments.

2. In bracket 1, insert the area of the table that does not maintain the row and column alignments.

Filing of biosequence information on compact disc is now permitted in lieu of filing on paper. See MPEP § 2420 and § 2422.03.