Q) PTO-892

by patentbar on September 2, 2008 · 25 comments

in Exam Questions

It has been reported that a question involves what an examiner can cite on a form PTO-892. See MPEP 707.05(a)-(e) and Form PTO-892 (found at the end of the section 707.05(a)).

{ 25 comments… read them below or add one }

1 samboNo Gravatar September 12, 2009 at 10:32 am

Got this Q yesterday, I believe it was asking about citiing references.The question also involved another form, XXX-### slips my mind Some of the answers are…

1. Examiner cites all prior references on the PTO-892 and they are ALL published

2.Applicant cites those references only appearing on IDS on PTO-892

3…..

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2 JakeNo Gravatar October 11, 2009 at 7:48 pm

MPEP 707.05 Citation of References – During the examination of an application or reexamination of a patent, the examiner should cite appropriate prior art which is nearest to the subject matter defined in the claims. When such prior art is cited, its pertinence should be explained.

Only in those instances where a proper search has not revealed any prior art relevant to the claimed invention is it appropriate to send an application to issue with no art cited. In the case where no prior art is cited, the examiner must write “None” on a form PTO-892 and insert it in the file wrapper.

Examiners should cite of interest all material prior art having an effective filing date after the filing date of the U.S. parent application but before the actual filing date of the application being examined.

*****************************

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3 JakeNo Gravatar October 11, 2009 at 7:51 pm

I think we’d have to know more about the references to figure this one out.

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4 Emily M.No Gravatar February 13, 2010 at 9:55 pm

The question didn’t involve specific references – just statements about what goes on these forms.

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5 Emily M.No Gravatar February 13, 2010 at 9:54 pm

I got this too. The other form was 1449. Mine was a “which is incorrect” question. I wasn’t positive after searching MPEP, but the answer I chose was something about the examiner lists references cited by applicant in an IDS on an 892, because I think those go on a 1449. I was able to eliminate a few wrong answers, one I remember was that the examiner can cite prior art references in an examiner’s amendment or statement of reasons for allowance, which would then be attached to notice of allowance (or something like that).

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6 Chemist62No Gravatar March 18, 2010 at 11:42 am

This is for a request for information by the Office:
MPEP E8R4 704.14(d) Relationship to Information Disclosure Statements [R-3]
The initial reply, if responsive to the requirement for information under 37 CFR 1.105 and submitted within the original time period for reply including any extensions of time, does not have to satisfy the fee and/or certification requirements of 37 CFR 1.97 and 1.98. Applicant should list the references on a copy of Form PTO-1449 or PTO/SB/08 to have the citations entered in the record. Any replies made subsequent to the initial reply must meet the provisions of 37 CFR
1.97 and 1.98 as appropriate.

The 892 form is used by the examiner, for the references the examiner cites:

MPEP E8R4 707.05(a) Copies of Cited References [R-3]
Copies of cited >foreign patent documents and non-patent literature< references (except as noted below) are automatically furnished without charge to applicant together with the Office action in which they are cited…….
Copies of references cited by applicant in accordance with MPEP § 609, § 707.05(b) and § 708.02 are not furnished to applicant with the Office action. Additionally, copies of references cited in continuation applications if they had been previously cited in the parent application are not furnished. The examiner should check the left hand column of form PTO-892 if a copy of the reference is not to be furnished to the applicant.
Copies of foreign patent documents

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7 SNo Gravatar June 5, 2010 at 7:04 am

I got this. Exactly like how Emily stated it.

I also chose something about the examiner lists references cited by applicant in an IDS on an 892, because I think those go on a 1449.

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8 PCTMasterNo Gravatar July 26, 2010 at 7:08 pm

I had this today. I chose what you guys did b/c you guys did…I have no idea what the right answer is. I passed.

9 toomuch23No Gravatar October 28, 2010 at 4:58 pm

I think applicant CAN list references on a 1449 (or PTO/SB/08). The examiner however can not. I also doubt that either applicant nor examiner ‘lists’ anything on the 892???

10 LMNo Gravatar November 6, 2010 at 7:43 pm

Examiner lists on PTO-892 and applicant lists on PTO-1449

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11 patenttipsNo Gravatar March 19, 2011 at 4:58 pm

correct

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12 studierNo Gravatar December 4, 2010 at 2:06 pm

In effort to clarify the purpose of all these forms…

Here is how the applicant submits prior art…

609.05(b) Complying Information Disclosure
Statements [R-3]
[. . .]
Examiners must consider all citations submitted in
conformance with the rules **, and their initials when
placed adjacent to the considered citations on the list
or in the boxes provided on a form PTO-1449 or PTO/
SB/08A and 08B provides a clear record of which
citations have been considered by the Office.

Here is how the examiner submits prior art…

707 Examiner’s Letter or Action [R-3]
37 CFR 1.104. Nature of examination.
(a) Examiner’s action.
(1) On taking up an application for examination or a
patent in a reexamination proceeding, the examiner shall make a
thorough study thereof and shall make a thorough investigation of
the available prior art relating to the subject matter of the claimed
invention.
[. . .]
The list of references cited appears on a separate
form, Notice of References Cited, PTO-892 (copy in
MPEP § 707.05) attached to applicant’s copies of the
action.
[. . .]
In the case where no prior art is cited, the examiner
must write “None” on a form PTO-892 and insert
it in the file wrapper.
[. . .]
Where references
have been cited during the prosecution of parent
applications and a continuing application, having no
newly cited references, is ready for allowance, the
cited references of the parent applications should be
listed on a form PTO-892.
[. . .]
In a continued
prosecution application filed under 37 CFR 1.53(d), it
is not necessary to prepare a new form PTO-892 since
the form from the parent application is in the same file
wrapper and will be used by the printer.

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13 AnneNo Gravatar January 19, 2011 at 4:12 pm

Got this one today. It was asking which statement was incorrect, and I chose the one that said ‘all references cited by the examiner should be listed in the form PTO-892 or PTO-1449’, b/c it seemed that PTO-1449 is used by the applicant and not by the examiner. I also had the answer choice of ‘examiner citing the references that were previously cited by the applicant in the IDS in the from PTO-892’. I found the following in the MPEP, and decided this answer choice might be correct, therefore not the answer to the questions. I don’t know if I am correct.

707.05(d) Reference Cited in Subsequent Actions [R-2]
Where an applicant in an amendatory paper refers to a reference that is subsequently relied upon by the examiner, such reference shall be cited by the examiner in the usual manner using a form PTO-892, “Notice of References Cited,” unless applicant has listed the reference on a >formPTO/ SB/08< that has been initialed by the examiner.

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14 epepNo Gravatar March 7, 2011 at 11:54 am

I knew the sentiments from above going into the exam, but the question above isn’t entirely correct.

Just keep in mind for this one that the examiner marks up your 1449, and an 892 lists all references cited by examiner. If my reading of the MPEP was correct, the 892 doesn’t list the refs from 1449. Instead, the examiner initials the 1449 and then puts his/her own refs on the 892, not including the 1449 ones. It makes sense logically, because it would be redundant to just copy all refs over.

IIRC, the other answers made it sound that there were times when the examiner wouldn’t have to cite things – e.g. refs from office action don’t have to be in refs cited. Could be right, but I doubt it.

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15 patenttipsNo Gravatar March 19, 2011 at 5:04 pm

yeah i’m not sure, when i was an examiner, i would cite any art used to reject regardless if it was on the 1449. as 892 seemed to be sort of “an index” for art discussed in the action. however, this was merely my style, not sure if it was the mpep way of doing things.

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16 BigbadvoododaddyNo Gravatar July 3, 2011 at 3:32 pm

That is correct.
Even if the applicant has listed references on a SB/08, the same can be listed on the 892. Since it is the 892 is what is used in the IFW as an index, which will get printed on the patent as references cited. So if the applicant wishes something to be considered, he or she will list it and turn it into the pto on a SB/08 or 1449. That inturn will get cited on a 892 if it is material to patentability.

17 SolNo Gravatar April 7, 2012 at 9:16 pm

MEPE is not clear but I agree with this

Applicants disclose information uisng 1449

Examiner initial things that have been considered on 1449

Examiner also list information using 892. Information includes Examiner’s own findings and things submitted by Applicant on 1449.

However, I think the Examiner have a choice here, he may or may not list things submitted by Applicant on 1449 to 892. “unless applicant has listed the reference on a form ** PTO/SB/08 that has been initialed by the examiner.”

Also here is where I infer my understanding:
600
“If an item of information is cited more than once in an IDS and on a form PTO-892, the citation of the item will be listed only once on the patent as a citation cited by the examiner.”

18 SolNo Gravatar April 7, 2012 at 9:26 pm

By the way, PTO-1449 is an old form. SB/08 is the current version. But PTO-1449 and SB/08 have the same function for Applicant’s IDS

19 TJLNo Gravatar August 17, 2011 at 2:51 pm

Agree with Bigbadvoododaddy. MPEP 707.05(d) seems to disqualify the answer choice which reads: “examiner citing the references that were previously cited by the applicant in the IDS in the from PTO-892”. This appears to be consistent with PTO practice, therefore not an incorrect answer, as the question calls for.

707.05(d)Reference Cited in SubsequentActions [R-5]
Where an applicant in an amendatory paper refers to a reference that is subsequently relied upon by the examiner, such reference shall be cited by the examiner in the usual manner using a form PTO-892, “Notice of References Cited,” unless applicant has listed the reference on a form ** PTO/SB/08 that has been initialed by the examiner.

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20 maggieNo Gravatar November 15, 2011 at 5:50 pm

Exam Q1: It has been reported that a question involves what an examiner can cite on a form PTO-892.
Exam Q2: Asking which statement was incorrect?
(A1) all references cited by the examiner should be listed in the form PTO-892 or PTO-1449.
(A2) examiner lists references cited by applicant in an IDS on an 892, because I think those go on a 1449.

(1) Examiner lists on PTO-892 all pertinent prior art,
(2) In the case where no prior art is cited, the examiner
must write “None” on PTO-892

(3) applicant lists references on PTO-1449 (or PTO/SB/08).

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21 maggieNo Gravatar November 15, 2011 at 5:51 pm

(1) (2) (3) ARE JUST FACTS FROM MPEP

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22 SolNo Gravatar April 7, 2012 at 9:26 pm

A1 is wrong, A2 is OK

23 JakobNo Gravatar August 11, 2014 at 2:24 pm

I think I found the answer to this in 1302.12…

When an examiner lists references on a form PTO-892, the examiner lists references that are relied upon in a prior art rejection or mentioned as pertinent. See MPEP § 707.05(c). The examiner does not list references which were previously cited by the applicant (and initialed by an examiner) on an Information Disclosure Statement, for example, on a PTO/SB/08. See MPEP § 609 and § 707.05(b), (c) and (d).

Anyone disagree?

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24 MichaelNo Gravatar March 3, 2015 at 7:43 pm

Hi do you know where the form PTO-892 can be downloaded in PDF
Was looking in the USP site for hours, other forms but not PTO-892

Many thanks

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25 PrepNo Gravatar July 17, 2016 at 10:51 am

PTO-892 is the listing of all art cited by the examiner. He wont repeat art which is in the SB08 filed by an applicant, which he has initialed. He will copy over the art from previous parents in PTO-892 in a continuation. A PTO-892 is in every file wrapper of every patent issued, if only to state “no reference” found.

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