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.
[1] All terms have a meaning in extension and in intension. The meaning of a term in extension consists of the objects to which the term may be applied; its meaning in intension consists of the qualities necessarily possessed by objects bearing that name. The term "motors" in extension means all motors—electric, gas, water, spring, weight, etc. "Motors" in intension means instruments to convert some form or manifestation of energy into periodical or cyclical motion of a body. As the intension increases the extension decreases, and vice versa. There must be more motors than there are electric motors, and electric motors have more qualifications than are common to all motors. Comparison of arts and instruments with respect to their extension and intension for classification purposes should be made between comparable qualities. A claim for a steam-engine may be very specific while a claim for a reaper may be very broad; here there is no comparable relationship, and the terms intensive and extensive do not have the relative significance most useful in classification. But when a patent or application contains claims for mechanism peculiar to electric motors and other claims for mechanism common to electric motors and other kinds of motors, the claims for the electric motor would control the classification.
(D) PROCEDURE IN RECLASSIFYING WITHIN EXAMINING DIVISIONS.
(1) Do not start to make a new class or revise an old one with preconceived fixed notions respecting its scope and the particular subdivisions required. Wait until all patents pertinent to the subject have been seen and adequate knowledge of them acquired. In other words, make no a priori classification but discover and assemble all the facts and from them make your inductions. Then the common characteristics of the subject-matter of the class may be intelligently defined, the limitations of the class marked out, and its relation to other classes set forth. Bear in mind that the Patent Office classification deals with the subject-matter of the useful arts rather than merely with existing classes, and that it is not therefore essential to retain classes that are found to be composed of unrelated or too distantly related units.