How should an examiner handle information about areas of search submitted by an applicant?
When an applicant submits information about areas of search, the examiner must consider this information and clearly indicate which areas were used and which were not used in performing the search. The MPEP provides specific guidance: “Information constituting identification of areas of search must be considered and the examiner must indicate which areas were used…
Read MoreWhat is the examiner’s responsibility regarding art submitted in response to a 37 CFR 1.105 requirement?
Examiners have a specific responsibility to consider art submitted in response to a 37 CFR 1.105 requirement. The MPEP states: “Art that is submitted in response to a 37 CFR 1.105 requirement must be considered, at least to the extent that art submitted with an Information Disclosure Statement under 37 CFR 1.97 and 1.98 is…
Read MoreWhat is the examiner’s obligation after receiving an applicant’s reply to a 37 CFR 1.105 requirement?
The examiner has a clear obligation to consider the information submitted with the applicant’s reply and apply it appropriately. This obligation stems from the examiner’s assertion that the information is necessary for examination. Specifically, the MPEP states: “The examiner must consider the information submitted with the applicant’s reply and apply the information as the examiner…
Read MoreCan an examiner deny considering information submitted in reply to a 37 CFR 1.105 requirement?
No, an examiner cannot deny considering information that is submitted in reply to a 37 CFR 1.105 requirement, as long as it is within the scope of that requirement. The MPEP is explicit on this point: “It is never appropriate to deny considering information that is submitted in reply to, and is within the scope…
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