905
MANUAL OF PATENT EXAMINING PROCEDURE
The best reference should always be the one used. Sometimes the best reference will have a publication date less than a year prior to the application filing date, hence it will be open to being overcome under 37 CFR 1.131. In these cases, if a second reference exists which cannot be so overcome and which, though inferior, is an adequate basis for rejection, the claims should be additionally rejected thereon. In all references considered, including nonpatent, foreign patents, and domestic patents, the examiner should study the specification or description sufficiently to determine the full value of the reference disclosure relative to the claimed or claimable subject matter.
905 905.03
Miscellaneous Ordering of Patented and Abandoned Provisional and Nonprovisional Application Files [R-5]
In the examination of an application>,< it is sometimes necessary to inspect the application papers of some previously abandoned application (provisional or nonprovisional) or granted patent. This is always true in the case of a reissue application and reexamination proceeding. Patented and abandoned files are stored at the Files Repository. Older files are housed in remote warehouses located in Maryland and Virginia. If the patented or abandoned file is an Image File Wrapper (IFW) file, examiners can view the application papers from their desktop via the Patent Examiner’s Toolkit. Patented and abandoned files are ordered by means of a PALM video display or PALM intranet site transaction. To place such an order, the examiner is required to input his/her PALM location code, employee number, and patent number(s) and/or application number(s) of the file(s) that are needed. After transmission of the request transaction by the examiner, a “response” screen appears on the video display terminal or workstation browser which informs **>the examiner< of the status of the request for each file. The examiner is informed that the request
Rev. 5, Aug. 2006
(A) is accepted; (B) is accepted, but ** the file is located at a remote warehouse (in which case delivery time is increased); (C) is not accepted because the file is not located at the repository or warehouse; (D) is not accepted because a previous request for the file has not yet been filled; or (E) is not accepted because the patent or application number inputted is not valid. Periodically each day, personnel at the Files Repository perform a PALM print transaction which produces a list of all accepted requests in patent number order and, for requests for abandoned files, in application number order. The printed record of each request is detached from the list when its associated file is found. It is then stapled to it. Throughout the day, periodic deliveries of files are made directly to the offices of their requesters by Files Repository personnel. Upon delivery of files at the various locations, files that are ready to be returned to the repository are picked up. With the exception of certain older files, the drawings of patented and abandoned files, if any, are now stored within their respective application file wrappers. Since it is desired not to separate one from the other, both the file and its drawings are delivered when a file is ordered.
905.06
Patent [R-3]
Family
Information
Patent family information is available at the U.S. Patent and Trademark Office (Office) primarily through commercial databases. See MPEP § 901.05 regarding patent family. Examiners have access to this information either directly through the automated search tools such as the Examiner’s Automated Search Tool (EAST) and the Web-based Examiner Search Tool (WEST) or indirectly through the search services of the Scientific and Technical Information Center (STIC). > I.
< AVAILABLE DATABASES
Derwent’s World Patents Index (WPI) and International Patent Documentation Center (INPADOC) are
900-52