Top of Notices Top of Notices   (140)  December 31, 2013 US PATENT AND TRADEMARK OFFICE Print This Notice 1397 CNOG  464 

Reexamination Referenced Items (138, 139, 140, 141, 142, 143, 144, 145, 146, 147, 148, 149, 150, 151, 152)
(140)                    Elimination of the Listing of
                            Prior Art Documents on
                          Reexamination Certificates

   Currently, the United States Patent and Trademark Office (Office)
includes on each reexamination certificate a list of all prior art
documents cited by patent owner and third parties that were considered by
the Office and all prior art documents cited by the Office in the
reexamination proceeding. In order to expedite issuance of reexamination
certificates, the Office is eliminating printing of the listing of prior
art documents on reexamination certificates.

   The Office's Public Patent Application Information Retrieval (PAIR)
system provides electronic listings of the prior art documents considered
and cited by the Office in each reexamination proceeding. Therefore,
printing such information on reexamination certificates is no longer
necessary. The reexamination certificate will now include a notice thereon
stating that the list of cited prior art documents will be available via
PAIR by reexamination control number. Members of the public can access
Public PAIR to conveniently obtain the list of prior art documents cited by
inputting the reexamination control number and viewing each list of cited
prior art documents.

   Furthermore, the Manual of Patent Examining Procedure (MPEP) currently
indicates, at sections 2290 and 2690, that the reexamination certificate
will include: "[t]he prior art documents cited at INID code [56] will be
only those which are part of the reexamination file and cited on forms
PTO-1449, PTO/SB/08A or 08B, or PTO/SB/42 (or on a form having a format
equivalent to one of these forms) (and the documents have not been crossed
out because they were not considered) and PTO-892." Since the listing of
prior art documents will be eliminated from the reexamination certificate,
the MPEP, in chapters 2200 and 2600, will be updated to reflect this new

   On June 18, 2011, a new Display References tab became available in
Public PAIR where, under the heading "Reference Forms," all prior art
listings (PTO-892, PTO-1449, IDS) in the file are available. These listings
can now be easily viewed and downloaded from this new tab. Note: These same
forms and documents are still available on the Image File Wrapper tab.

   Any inquiry regarding this notice may be directed to Mary C. Till,
Senior Legal Advisor, Office of Patent Legal Administration, Office of the
Associate Commissioner for Patent Examination Policy, by telephone at
(571) 272-7755 or (571) 272-7701, or by electronic mail at

                                                            DAVID J. KAPPOS
                                            Under Secretary of Commerce for
                                  Intellectual Property and Director of the
                                  United States Patent and Trademark Office

                                 [1371 OG 95]