Comments on: Q) PTO-892

By: maggie

maggie — Tue, 15 Nov 2011 22:51:12 +0000

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

By: maggie

maggie — Tue, 15 Nov 2011 22:50:17 +0000

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).

By: TJL

TJL — Wed, 17 Aug 2011 18:51:29 +0000

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.

By: Bigbadvoododaddy

Bigbadvoododaddy — Sun, 03 Jul 2011 19:32:07 +0000

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.

By: patenttips

patenttips — Sat, 19 Mar 2011 21:04:02 +0000

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.

By: patenttips

patenttips — Sat, 19 Mar 2011 20:58:45 +0000

correct

By: epep

epep — Mon, 07 Mar 2011 16:54:22 +0000

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.

By: Anne

Anne — Wed, 19 Jan 2011 21:12:03 +0000

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.

By: studier

studier — Sat, 04 Dec 2010 19:06:09 +0000

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.

By: LM

LM — Sat, 06 Nov 2010 23:43:25 +0000

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