How are references from the original patent handled in a reissue application?
In a reissue application, the examiner should consider all references cited during the original patent prosecution. These references should be listed on a PTO-892 form if they are cited or applied again in the reissue application. However, some references may no longer be relevant due to changes in claim scope and may not need to be listed.
As stated in MPEP § 1406: It is noted that a reference cited in the original patent may no longer be relevant, e.g., in view of a narrowing of the claim scope in the reissue application, and therefore may not need to be listed on the PTO-892 form.
If applicants want to ensure all references from the original patent are considered, they should file an information disclosure statement (IDS) in compliance with 37 CFR 1.97 and 1.98.
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