Prior Art, Classification and Search (MPEP 900)

Commercial review courses seldom cover material in MPEP Chapter 900 rationalizing that historically, this material is not tested on the Patent Bar Exam. Recent test takers have noted that the following subject matter from Chapter 900 does appear on the Prometric Patent Bar exam:

Overview

How do examiners search for prior art?

• The examiner, upon understanding the invention disclosed and claimed in the application, searches the prior art which may be disclosed in patents and other published documents. Any such document used in the rejection of the claim is called a reference. [MPEP 904]
• In all Continuing Applications, the examiner should review the parent application and this fact should be made part of the record.
• A first search should be adequate enough not to require a second search for priori art. A second search may be necessitated by amendments of to check priori art cited in the first PTO action subsequent to the initial prior art search.
• In the first action on the merits of an application, the examiner shall make an initial endorsement, in black ink on the file wrapper, of the classes and subclasses of domestic and foreign patents, abstract collections, and publication in which the search for prior art was made. The examiner must also identify other information collected and sources in which the search for prior art was made, and also indicate the date(s) on which the search was conducted.

General search guidelines

Conducting a thorough search of the prior art requires three distinct steps by the examiner that are critical for a complete and thorough search: 1) identify the field of search, 2) selecting the proper tool(s) to perform the search (discretionary), and 3) determining the appropriate search strategy for each search tool selected (discretionary).

Three Reference Sources Required – Determining the field of search the examiner must consider domestic patents (including patent application publications), foreign patent documents, and non-patent literature.

Conducting searches at the USPTO Office –

A test taker reported the following answers to a question on the Prometric Patent Bar:

1. displaying a user pass in the TC search facility
2. removing patent publications from their shoes
3. re-shelving materials yourself or leave them for contract staff to handle

4. 900: What are the sources that the Examiner will look at for Prior Art? (sort of an extension of material in 700):

5. 1. Canceled matter in other patents: Once matter is canceled it is not available under 102(e) (since it is no longer part of a patent that actually gets granted). However, it is still considered to be published prior art that is effective as of the publication date of the app or patent, and it is therefore still available under 102(a).
6. 2. Abandoned U.S. applications: For abandoned apps that are actually published, the app is available under 102(a),(b) as of the publication date. It is also available under 102(e) as of the earliest effective filing date. For abandoned apps that never get published, if the abandoned app is referenced by another U.S. app, it will become available as a public document and be available as 102(a)(b) prior art.
7. 3. Pending U.S. applications: The pending app is available under 102(a)(b) as of the publication date, and is available under 102(e) as of the earliest effective filing date.
8. 4. Granted U.S. Patents: Granted patents are effective under 102(a)(b) as of the date of patenting, and under 102(e) as of the earliest effective filing date. (One thing: could this mean that the 102(a)(b) date actually changes from a pending app to the finally granted one???)
9. 5. Foreign Patent Docs: Foreign patents, or other publicly available foreign patent materials (like patent apps that have been ‘laid open’) are all available under 102(a)(b) as of the date the material becomes public.
10. 6. Non-Patent Publications: All printed publications are available as references as of their publication date.
11. 7. Published U.S. Abstracts, Abbreviatures, & Defensive Publications (Including SIRs): All of these publications are available and may be used under 102(a)(b).