Advance Notice of Changes to
                             MPEP  1206 and  2309

   This memorandum is to provide advance notice of changes that will be
made to MPEP    1206 and    2309 relating, respectively, to the
requirements for an appeal brief and preparation of interference papers by
an examiner. These changes will appear in the next revision of the Manual.
The changes will be based on the final rules relating to patent appeal and
interference proceedings, which were published in the Federal Register on
March 17, 1995 at 60 FR 14488 and in the Official Gazette on April 11,
1995 at 1173 Off. Gaz. Pat. Office 36. The effective date of these rule
changes is April 21, 1995.
   37 CFR 1.192(c) relating to the content of an appeal brief has been
changed so that it does not apply to pro se applicants, and in that two
additional items have been added. In particular, the appellant must
identify in the brief, the real party in interest and any related appeals
and interferences. Accordingly, examiners must review appeal briefs filed
on or after April 21, 1995 for the presence of the following items under
appropriate headings: (1) Real party in interest; (2) Related appeals and
interferences; (3) Status of claims; (4) Status of amendments; (5) Summary
of invention; (6) Issues; (7) Grouping of claims; (8) Argument; and (9)
Appendix. Examiners should continue to refer to MPEP    1206 (6th ed.,
Jan. 1995) for the standards for reviewing items (3) through (9). Under
the revised rules, a brief filed by a pro se applicant should be evaluated
on a case-by-case basis.
   Examiners should not be unduly rigid in reviewing appeal briefs for
compliance with the requirements of the rule. For example, if no amendment
has been filed after final rejection, a new brief should not be required
solely because the brief omits having some statement after the heading for
item (4), status of amendments.
   37 CFR 1.192(d) has been amended to indicate that "the appeal will
stand dismissed" if the appellant does not timely file an amended brief,
or files an amended brief which does not overcome all the reasons for
noncompliance of which the appellant was notified.
   Regarding the preparation of interference papers by the examiner, 37
CFR 1.609(b)(1) has been amended to require the examiner to explain why
the counts define different patentable inventions if there is more than
one count proposed. 37 CFR 1.609(b)(2) has been amended to require the
examiner to identify the claims of any application or patent which
correspond to each count and explain why each claim designated as
corresponding to a count is directed to the same patentable invention as
the count. 37 CFR 1.609(b)(3) has been amended to require the examiner to
identify the claims in any application or patent which do not correspond
to each count and to explain why each claim designated as not
corresponding to any count is not directed to the same patentable
invention as any count.
   The above changes will take effect on April 21, 1995.

April 18, 1995                                         J. MICHAEL THESZ, Editor
                                                               Manual of Patent
                                                            Examining Procedure