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)).
Q) PTO-892
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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…..
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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I think we’d have to know more about the references to figure this one out.
The question didn’t involve specific references – just statements about what goes on these forms.
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).
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
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.
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.