(22) Where a subclass with a generic title has indented thereunder a species type-subclass bearing the title of the generic subclass qualified by a difference, any patent which claims an invention falling within the genus subclass and discloses the qualification of the species type-subclass should be classified in the latter whether or not the entire disclosure is claimed. (See Rule 19.)

Example:

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If a patent claimed only the scroll of a scroll-chuck, but disclosed it in connection with a bevel pinion and ring, it should be classified in subclass 127, Bevel pinion and ring, and not in subclass 126, Scroll, although if there were no disclosure of the bevel pinion and ring it would go in subclass 126. Any search for scrolls must be prosecuted through all subclasses that include "Scroll" in the title.

(23) Where, as in the case of patents that show and claim a combination that as matter of common knowledge is not new except in one of its elements, to classify a patent strictly in accordance with rule would result in placing the patent where it would serve no useful purpose as a reference and having to cross-reference it to a class where it would serve a useful purpose, it is best to classify the patent in the class to which the element would take it. (See Rule 19.)

Example: A patent claiming a wheeled vehicle, broadly, in combination with an internal-combustion engine comprising a cylinder, a crank-case, a piston and suitably-connected crank, a valve opening into the crank-case, and a valve in the piston opening into the cylinder, may be advantageously classified as an internal-combustion engine notwithstanding the alleged invention is for a motor vehicle.

(24) In order to meet the situation respecting the classification of those patents that indiscriminately claim an article of manufacture defined only by the material of which it is made and those patents that claim those materials, leaving to the specification information regarding the designed uses, patents for articles defined only by their ingredients specifically set forth may be placed in the composition of matter or material class. (See Rule 19.)

Example: A patent having a claim for a cutter made of an alloy of iron, tungsten, and manganese would be classified with Alloys; a patent claiming a box made of paper composed of two layers united by a solution of asphaltum should go to the class of Laminated Fabric and Analogous Manufactures, rather than to paper boxes; and a patent for a house having its exterior coated with equal quantities by volume of carbonate of lead and oxid of barium suspended in a vehicle of linseed-oil would be classified as a paint rather than as a house.

(25) An alleged process of utilizing a specifically-defined composition or material which consists in merely applying it to the use it was designed for may be classified as a composition or material rather than as a process. (See Rule 19.)

Example: A process of painting the bottom of a marine vessel which consists in applying thereto a composition consisting of sulphate of copper, powdered metallic zinc, chlorid of antimony, and hyposulphite of soda, in a vehicle of linseed oil, would be more usefully classified as an antifouling paint than as a ship, as the invention would hardly be distinguishable from a paint claimed as such and described for use on submarine surfaces.

(26) An alleged process consisting merely in the use of a particularly-defined machine or similar instrument operating according to its law of action will ordinarily be classified in the class or subclassp. 35 where the machine belongs. But if in addition to defining the operation of a particular machine the claim also specifies acts not performed by the machine, the classification should be in the class or subclass in which the process belongs. (See Rule 19.)

Example: Thus a claim for a method of rolling an iron plate which consists in passing an iron blank between a pair of rolls arranged horizontally in juxtaposition one above the other and geared together so as to rotate in opposite directions, and causing an idle roll supported in bearings on the roll-housings to bear against the central portion of the surface of one of the first pair of rolls on the upper side thereof, should be classified as a rolling-mill, while if to that claim were added the steps of doubling the sheet after one passage between the rolls, again passing between the rolls, again doubling, and then passing the now four-ply pack between the rolls sidewise or turned 90 per cent to the direction in which it had previously been fed, the classification should be with processes of sheet-metal manufacture.

(27) In the absence of settled rules defining permissible joinder of inventions, there may be in one patent claims for one or more or all of the classes of invention named in the statute, to wit, machine, art, manufacture, and composition of matter. There may also be claims to several more or less related inventions in the same statutory class of invention but each belonging to a different industrial art. (1) Where different main classes are involved, the patent will be classified by the most intensive invention, without regard to the statutory class to which it belongs. (2) Where different subclasses of the same class are involved, the patent will be classified in that one of the several subclasses defined to receive the several inventions which stands highest in the schedule of subclasses.

(28) Where a patent contains claims for all or a plurality less than all of the statutory classes, the general rule of preference or superiority of the several classes of subclasses is that represented by the following order, to wit: (1) Machine (or other operative instrument); (2) Art; (3) Manufacture; (4) Composition of matter. This order is, in a general way, the order of intensiveness of the several kinds of invention. (See Rules 29-35.)

Example: An automatic screw-machine, peculiarly adapted to carry out a process of making a novel form of machine-screw out of a new iron alloy, and having a claim to the machine, to the process, to the screw, and to the alloy, would be assigned to Metal-Working, Combined machines, and, if all claims were allowed, cross-referenced to Bolt and rivet-making processes, to Bolts, and to Alloys. If the claim to any one or two of the subjects were eliminated, the order of preference or superiority and the order of cross-referencing would remain the same.

(29) Patents containing a plurality of claims for several different statutory kinds of invention that are classifiable in different main classes, and wherein the rule of relative intensiveness varies from the order Machine, Art, Manufacture, and Composition of matter, may be diagnosed and classified as directed in the following paragraphs (30 to 35).

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(30) Where a patent contains claims for a process and for an apparatus susceptible of use as an instrument in carrying out the process, but not peculiar to that use, or for an apparatus adapted to carry out but one step or only a part of the process, the process claim, being in this instance the more intensive, would control the classification. (See Rule 28.)

Example: In a patent containing a claim for a process of roasting ore and then collecting the fumes, and another claim for a roasting furnace that is a mere material-heating furnace, the process claim would control; whereas, if one claim were for a method of roasting ores consisting of stirring the ore, applying heat to the same, and collecting the solids from the fumes, and the other claim, were for a heating furnace having a stirrer and a fume arrester, the apparatus claim would control. And if a patent contained claims for a process of roasting ores, and other claims for a furnace susceptible of use in carrying out the process but equally useful in annealing glass or steel articles, the process claim would control.

(31) Where a patent claims a specified article of manufacture or other product, and also an instrument for making a part only of that specified article or other product, the product claim, being more intensive, should control the classification; so also in case of a claim for a product and a claim for an instrument performing any minor act with respect thereto. (See Rule 28.)

Example: Where a patent claims a particular construction of a riveted joint, and also a tool for calking the rivet, and where a patent claims a particular construction of shoe, and also a buttonhook for buttoning said shoe, the article and not the tool claims control.

(32) Where a patent contains claims to a process and a product, the process claims govern the classification in those cases where search among machines for making the product would have to be made, and such processes would be classifiable on the basis of the mode of operation, usually in the same class with machines for practicing such processes. (See Rule 28.)

Example: A patent having a claim for a process of making bifocal lenses, consisting in grinding the surface of one piece of glass to form a convex lens, heating another piece of glass until it is plastic, then forcing the ground surface of the first-named piece into the body of the latter and gradually cooling the lens-blank thus formed; and also a claim for a bifocal lens composed of two pieces of glass weld-united, would be classified in Glass-manufacture and cross-referenced into lenses. Or a patent having a claim to a process of making a metal plate with elongated perforations, consisting in forming round perforations in the plate and subsequently rolling the plate, thereby thinning and elongating the plate and elongating the openings, and also a claim to a metallic plate having relatively long and narrow perforations, would be classified on the basis of the process claim.

(33) Where a patent claims both process and product, and the alleged process is disclosed in the product, so that search would have to be made in the appropriate class of products, the product will be adopted as the basis of classification, and classification will be in the appropriate product class. (See Rule 28.)

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Example: A claim for a process of making a pencil consisting in assembling a core of graphite with a sheathing of wood, and attaching a cap of rubber-composition to one end, would be classified as a pencil rather than as a process, became conception of the article is inseparable from the process and search must be made in the article class.

(34) Where a patent claims a process of making a composition of matter, and also the composition of matter, the claims will be classified in general in accordance with the classification of the composition of matter in all cases where the process is peculiarly adapted to produce the composition, as by setting forth the introduction or assemblage of particular ingredients, since those processes that include the selection of particular ingredients necessitate search among compositions having such ingredients. (See Rule 28.)

Example: A patent having a claim for a composition consisting of a mixture of caoutchouc and casein, and a claim for the process of preparing a rubberlike substance which consists in adding undissolved raw caoutchouc to casein and thoroughly mixing and kneading the mass, would be classified according to the composition.

(35) Where a patent claims a product such as a specific article of manufacture, or a specific composition of matter, and also claims a process of general application for making one of the parts of the article or one of the ingredients of the composition, the product claim should control the classification. (See Rule 28.)

Example: If a patent claimed a woven textile fabric having the yarns interlaced in a defined relation, and a process of spinning a yarn utilized in the fabric; or if a patent claimed a varnish composed of shellac, dissolved in wood alcohol, and a pigment, and also contained a claim for distilling wood to obtain the alcohol, the product claim would control the classification in each instance, and the process would be cross-referenced.

(D) PROCEDURE IN RECLASSIFYING WITHIN EXAMINING DIVISIONS.

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Assuming that the work of reclassification is undertaken by examiners who are already experienced in the subject-matter to be classified, procedure as follows is recommended:

(2) Utilizing your previously acquired knowledge of the patents in the class you are about to revise, subdivide the existing subclasses into bundles, so as to assemble in each bundle those patents deemed to have the closest resemblance to each other. For the purpose of this assemblage, consider each patent as an entirety and not with reference to various more or less important parts of that entirety.

Example: An apparatus comprising in alleged combination a means for decanting water, a means for electrolytically depositing impurities, and a means for filtering the water, should not be classified either as a decanter, an electrolytic apparatus, or a filter, but should be classified as a combination apparatus (taking it to the general art of liquid purification). So also the combination of a rotary printing-press with a folding mechanism, and a wrapping mechanism, should not be classified merely as a rotary printing-press, a folding machine, or a wrapping machine, but should be classified as a combination of the several mechanisms as an entirety whose functions carried out in proper order produce a printed and wrapped newspaper.

(3) Write an approximate or tentative definition of the matter thus assembled in each bundle and attach it to its appropriate bundle.

(4) Where it appears that the subject matter of any bundle formed from the patents of any subclass is analogous to matter in other subclasses of the same class or in other classes, a note should be added to that effect so that this matter may be given special consideration.

(5) When the same examiner or different examiners are working on different subclasses containing analogous matter, parallel lines of subdivision should be followed wherever possible, in order to effect an arrangement that will facilitate comparisons.

(6) When subdividing a group of more or less complex organized structures or mechanisms, note should be taken of subcombinations that form or it is thought should form the basis of other subclasses, either in the same or different classes, into which those details may be collected, either classified therein originally or by cross-reference.

Example: Assuming that the combination of press, folder, and wrapping mechanism, referred to in a preceding paragraph is to be classified in a class of Printing, on the entirety as a combination having the function of printing, plus other functions, and that folding and also wrapping are separately classified, then the particular type of press should be selected to be cross-referenced into a press-type subclass of the class of Printing, such as "Presses, rotary," while the folding mechanism and the wrapping mechanism would be noted for cross-reference to other appropriate classes. Also, any part of the printing press, such as the inking mechanism, specifically described, should be noted for cross-reference into a subclass of Printing designed to receive the inking mechanism as a part of the printing press.

(7) After a knowledge of the material of the class has been obtained by estimating the resemblances between the individual patents thatp. 39 have been assembled in the several groups, comparison of these groups, represented by the bundles of photolithographs, by the aid of the approximate definitions and notes attached can be made. It can then be decided whether all of these groups are to be retained in the proposed class, and the retained groups can be organized into a class with the subclasses arranged so as to bring those subclasses having the strongest resemblances in closest relation, and in such order as to comply with the conventions adopted in the official classification. It will probably be necessary to have one subclass or group as broad as the definition of the class, to take unclassifiable matter and to provide for possible future inventions.

(8) Up to this point, more or less cursory attention may be given individual patents; but when an arrangement of subclasses shall have been tentatively adopted it will be necessary to consider each patent carefully to ascertain whether it is properly placed.

(9) Patents that, considered as an entirety, cover means not peculiar to the class or subject-matter being revised, should, in general, when assembled in groups as indicated, have a note attached indicating not only want of limitation to the subject-matter of the class but also a more appropriate class to receive them if such there be. Although a very large proportion of patents can be accurately classified as indicated by their titles and stated uses, the mere fact that in a patent found in a class the invention is called in the specification or claims by a name peculiar to the class is not of itself a reason for considering it peculiar to the class. A gas and liquid contact apparatus may be called a heater, a cooler, a gas-washer, a water-carbonator, a condenser, a disinfecter, an air-moistener, and so on, depending upon accident of use. If there are not elements in some claim to confine the means described distinctively to what it is called, or if there are no functions necessarily implied in the means claimed peculiar to the named use, the patent should not be kept in the class unless there is no other class in the office that can receive it.

Example: Where the matter claimed is a metal beam of peculiar cross-section, it should be classified with other metal beams, as in Class 189, Metallic Building Structures, even if it is named in the application as a beam of particular use, as a railroad-tie, car-sill, bridge-tie, etc. Should a mere dash-pot be found classified in Class 171, Electricity, Generation, a note should be attached indicating that it belongs in the appropriate element class.

(10) In giving this final careful attention to the patents, each should also be scanned to see whether it contains matter that should be cross-referenced. A few lines obscurely located in a specification may contain a disclosure of a most valuable invention. No class can be deemed complete until the disclosures appropriate to it found as parts of more complex inventions in other classes, or disclosures of analogous matter in other classes, are either cross-referenced into it or cross search-notes made.

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(11) To indicate cross-references, from one subclass to another within the class or from the class under consideration into another class, attach a small slip of paper to the patent and mark on the slip the subclass number in which the cross-reference shall be mounted. If the matter to be cross-referenced relates only to a portion of a voluminous patent, the portion of the specification and drawing to be cross-referenced should be indicated. If the cross-reference falls outside the class, the class number should be noted in addition to the subclass number.

(12) Should it be found that the handling of copies in making examinations detaches the cross-reference slips, it may be advisable to mark lightly but legibly in pencil on the lower right-hand corner of the examiner's photolithograph the number of the subclass or subclasses into which it is to be cross-referenced, or the number of the class and subclass in case it is to be cross-referenced to another class.

(13) Whether cross-reference notations are written on a separate slip or on the photolithograph, the number of the class and subclass into which a patent is to be cross-referenced should always be preceded by X (thus X 101-23) in order to distinguish the original classification notation from the cross-reference notation and enable sorting and indexing to be done without confusion.

(14) To indicate cross-references from other classes into the one being reclassified, set down the number of the patent in a notebook, placing after the number (1) the class and subclass in which it is classified; and (2) the number of the class and subclass in which it is to be cross-referenced.

(15) Should new subclasses be formed or transfers of patents be determined on, and lists of the patents, instead of copies thereof, be furnished clerks for the purpose of making such subclasses and transfers and correcting the official indexes and other records, each patent should be listed by number in column to the left of a sheet of paper or notebook, and opposite each patent number on the same sheet should be written (1) the number of the class and subclass in which it is officially classified; (2) the number of the class and subclass to which it is intended to transfer it; and (3) the numbers of the classes and subclasses, preceded by X, into which it is intended to cross-reference it.

Note: Even though examiners engaged in reclassifying are confident of their ability to classify and arrange on better principles than those that have been applied thus far in the classification, they ought, nevertheless, to follow those principles under which one-half of the patents have been classified. Until the Commissioner of Patents orders examiners to classify on other principles, it is expected they will follow those now established.