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719.05 Field of Search [R-2] - 700 Examination of Applications
719.05 Field of Search [R-2]
In the first action on the merits of an application, the examiner shall make an initial endorsement in black ink, in the space provided on the right outside panel of the file wrapper, of the classes and subclasses of domestic and foreign patents, abstract collections, and publications in which the search for prior art was made. Other information collections and sources in which the search for prior art was made must also be identified by the examiner. The examiner must also indicate the date(s) on which the search was conducted. In subsequent actions, where the search is brought up to date and/or where a further search is made, the examiner must endorse and initial on the file wrapper that the search has been updated and/or identify the additional field of search. Any search updates should include all of the databases and the search queries and classifications employed in the original search. See MPEP § 904. Great care should be taken so as to clearly indicate the places searched and the date(s) on which the search was conducted.
In order to provide a complete, accurate, and uniform record of what has been searched and considered by the examiner for each application, the U.S. Patent and Trademark Office has established procedures for recording search data in the application file. Such a record is of importance to anyone evaluating the strength and validity of a patent, particularly if the patent is involved in litigation. These procedures will also facilitate the printing of certain search data on patents.
Under the procedures, searches are separated into two categories and listed, as appropriate, in either the "SEARCHED" box or "SEARCH NOTES" box on the file wrapper. >For Image File Wrapper (IFW) processing, see IFW Manual section 3.7.<
I. "SEARCHED" BOX ENTRIES
Search entries made here, except those for search updates (see item I(C) below), will be printed under "Field of Search" on the patent front page. Therefore, the following searches will be recorded in the "SEARCHED" box by the examiner along with the date and the examiner's initials, according to the following guidelines:
(A) A complete search of a subclass, including all United States and foreign patent documents, whether filed by U.S. or IPC classification, and other publications placed therein. The complete classification (class and subclass) should be recorded.
Examples
424/270, 272, 273
224/42.1 F
414/DIG. 4
D3/32 R
A61K 9/22
A61K 31/56 - A61K 31/585
(B) A limited search of a subclass, for example, a search that is restricted to an identifiable portion of the patent documents placed therein. If, however, only the publications in a subclass are searched, such an entry is to be made under "SEARCH NOTES" rather than under "SEARCHED." (See item II(D) below.) The class and subclass, followed by the information defining the portion of the subclass searched, in parenthesis, should be recorded.
Examples
414/1 (U.S. only)
238/6 (1954 to date)
(C) An update of a search previously made. This search entry will be recorded in a manner to indicate clearly which of the previously recorded searches have been updated, followed by the expression "(updated)." Search update entries, although recorded in the "SEARCHED" box, will not be printed.
Examples
424/270 (updated)
414/DIG. 4 (updated)
Above (updated)
When a search made in a parent application is updated during the examination of a continuing application, those searches updated, followed by "(updated from parent S.N. ............)" will be recorded. If the parent application has been patented, the patent number "Pat. N. ............" instead of application number in the above phrase will be recorded. The examiner should recopy the entire search updated from the parent on the file wrapper of the continuing application to the extent pertinent to the continuing application.Examples
273/29 BC (updated from
343/114.5 parent S.N. 08/495,123)
116/DIG.47 (updated from
D7/73, 74 parent Pat. N. 4,998,999)
>For IFW processing, see IFW Manual section 3.7.<II. "SEARCH NOTES" BOX ENTRIES
Entries made in the "SEARCH NOTES" box are of equal importance to those placed in the "SEARCHED" box; however, these entries are not to be printed on any resulting patent. They are intended to complete the application file record of areas and/or documents considered by the examiner in his or her search. The examiner should record the following searches in this box and in the manner indicated, with each search dated and initialled:
(A) A cursory search, or scanning, of a U.S. subclass or IPC subclass/group/subgroup, i.e., a search usually made to determine if the documents classified there are relevant. Record the classification, followed by "(cursory)."
Examples
250/13 (cursory)
A61K 9/44 (cursory)
(B) A consultation with other examiners to determine if relevant search fields exist in their areas of expertise. If the subclass is not searched, record the class and subclass discussed, followed by "(consulted)." This entry may also include the name of the examiner consulted and the art unit.
Examples
24/ fasteners (consulted)
24/ fasteners (consulted J. Doe A.U. 3501)
24/201 R-230 AV (consulted)
(C) A search of a publication not located within the classified patent file, e.g., a library search, a text book search, a Chemical Abstracts search, etc. Record according to the following for each type of literature search:
(1) Abstracting publications, such as Chemical Abstracts, record name of publications, list terms consulted in index, and indicate period covered.
Examples
Chem. Abs, Palladium hydride Jan.-June 1975
Eng. Index, Data Conversion Analog to Digital 1975
(2) Periodicals - list by title**>, volume, issue, pages and date<, as appropriate.
Examples
Popular Mechanics, June-Dec. 1974
Lubrication Engineering, vols. 20-24
(3) Books - list by title>*,< author, edition or date>, pages<, as appropriate.
Example
Introduction to Hydraulic Fluids, Roger E. Hatton, 1962
(4) Other types of literature not specifically mentioned herein (i.e., catalogs, manufacturer's literature, private collections, etc.). Record data as necessary to provide unique identification of material searched.
Example
Sears Roebuck catalog, Spring-Summer, 1973.
Where a book or specific issue of a periodical is cited by the examiner, it is not necessary to list the specific book or periodical in the "SEARCH NOTES" box. A cursory or browsing search through a number of materials that are not found to be of significant relevance may be indicated in a collective manner, e.g., "Browsed STIC shelves under QA 76.5" or "Browsed text books in STIC relating to......................" More detailed reviews or searches through books and periodicals or any search of terms in abstracting publications should be specifically recorded, however.(5) Computer Search in Scientific and Technical Information Center (STIC) - An online computerized literature searching service which uses key terms and index terms to locate relevant publications in many large bibliographic data bases is available in the STIC. Members of the STIC staff are assigned to assist examiners in selecting key terms and to conduct a search. To record a computer search conducted by STIC, see instructions in II(F) below.
(D) A search of only the publications in a subclass. Record class and subclass followed by "(publications only)."
Examples
43/56 (publications only)
99/DIG. 15 (publications only)
(E) A review of art cited in a parent application or an original patent, as required for all continuation and continuation-in-part applications, divisional applications, reissue applications and reexamination proceedings, or a review of art cited in related applications. Record the application number of a parent application that is still pending or abandoned, followed by "refs. checked" or "refs. ck'ed." If for any reason not all of the references have been checked because they are not available or clearly not relevant, such exceptions should be noted.
Examples
S. N. 495,123 refs. checked
S. N. 490,000 refs. checked
S. N. 480,111 refs. checked except for Greek patent to Kam
S. N.410,113 refs. not checked since the file was not available
Record the patent number of a parent or related application that is now patented or of an original patent now being reissued with "refs. checked" or "refs. ck'ed."Examples
Pat. 3,900,000 refs. checked
Pat. 3,911,111 refs. ck'ed
(F) In each action involving a search of a computer accessed text or chemical structure or sequence database, the examiner shall endorse, in the SEARCH NOTES box on the file wrapper flap, the name of the database service, the date when the search was made or was brought up to date and the examiner's initials. All entries shall be made in BLACK INK. Computer database searches including text, chemical structure, or sequences shall be documented in the SEARCH NOTES box on the file wrapper by providing the following minimum information:
(1) The search logic or chemical structure or sequence used as a query;
(2) The name of the file or files searched and the database service;
(3) Date of the search; and
(4) The examiner's initials.
Three ways in which this minimum documentation can be provided are:
(1) supplying, and as necessary annotating, the computer search printout resulting from a computer assisted search (see examples 1 and 2 and "Printouts" below), or
(2) recording the required information on the Search Request Form PTO-1590, or
(3) recording the required information in the SEARCH NOTES box.
For methods (1) and (2), the name of the database service and the expressions "(see form)" or "(see printout)" should be recorded in the SEARCH NOTES box as appropriate with the date and the examiner's initials.
> A. < Printouts
Most of the database services accessed in application searches provide a command to display or print the search history which includes most, if not all, of the minimum required information for documenting database searches. Table 1 below lists the history command for each database service and which of the required minimum documentation elements are missing when the history command is entered. The missing elements may be documented by writing them on the printout of the search history or by supplying further portions of the search transcript which do include the missing elements. In some instances, depending on the database service, the log off command will supply the missing data element. A printout of the history command and log out response containing the required data elements is acceptable as full documentation of a search. For example, this is the case with *>searches in< STN and *>Questel-Orbit<; the name of the database service is not provided by entering the history command and must be supplied by the inclusion of the log off command. Another example is with WEST. Neither the Freeform Search page nor the Show S Numbers page prints the date of the search, therefore, the date of the WEST search must be documented in writing.>For IFW processing, see IFW Manual section 3.7.<
If there are several search statements in the history, the statement or statements of which the results were reviewed should be indicated by circling them in BLACK INK. The form or printout page(s) with the required data elements should be hole punched and placed in the application file on the right hand flap of the file wrapper. >For IFW processing, see IFW Manual section 3.7.<
> B. < Explanation of Table Terminology
History Command - Generally, a display of what the user has asked the search software to do. Will display the search logic entered by the user. Some histories are limited to display of the searches done only in the current file while others deliver a complete record of what file or files were accessed and all searches done since sign on. Dialog, **>Questel-Orbit<, and *>LexisNexisTM< are services limited to display of the searches done only in the current file.
Name of Database Service - Most services do not display this information as part of the search transcript. None of the services in the table, except WEST, list that information as part of the history command. However, **>Questel-Orbit<, and STN supply the name of the database service during log off.
Search Logic - Generally, a display of the search commands executed by the search software. For a structure or sequence search, this can be a printout of the structure or sequence used to query the system.
Name of File Searched - This is the name of the collection of data accessed. In some services, the file name is only displayed when the file is selected and not in response to the history display command; Dialog and **>Questel-Orbit< are two such services. For example, Dialog supplies only the file number with the log off command. The file number alone is not adequate documentation of a search. The name of the file is required.
Date of Search - WEST, Dialog, **>and Questel-Orbit< do not display the date of search as part of the history command. Dialog **>and Questel-Orbit< supply the date of search during log off; the date of search for WEST must be written on the search report.
Nucleotide and peptide sequence searches will be fully documented by a printout of the search query *>SEQ ID NO,< and * beginning of the search result file. Each query * should be clearly related to the appropriate search result, if necessary, by appropriate annotation.
> C. < Other Databases
For other types of publicly accessible computer accessed databases (e.g., CD-ROM databases, specialized databases, etc.), record data as necessary to provide unique identification of material searched and sufficient information as to the search query or request so that the search can be updated. The record should also document the location of the database and its form (CD-ROM, etc.).
Example: Citing a biotech CD-ROM database
Entrez: Sequences, National Center for Biotechnology Information, Version 7.19.91b (CD-ROM, TC 1600) Searched HIV and vaccine; neighbored Galloway article dated 6/5/91 on April 1, 1990.
Example: Citing a nonbiotech CD-ROM database
Computer Select, (November, 1991), Ziff Davis Communications Co., (CD-ROM, STIC), Searched Unix and emulation on December 1, 1991.
III. INFORMATION NOT RECORDED ON THE FILE WRAPPER
For an indication of consideration or nonconsideration of prior art citations submitted by applicant in Information Disclosure Statements ( 37 CFR 1.97 and 1.98), see MPEP § 609.
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