How should examiners use abstracts in prior art rejections?

Examiners should be cautious when using abstracts for prior art rejections. The MPEP provides the following guidance:

1. When both the abstract and the underlying document qualify as prior art, the underlying document should normally be used to support a rejection.
2. When relying on an abstract, “the evidence relied upon is the facts contained in the abstract, not additional facts that may be contained in the underlying full text document.“
3. Citing and relying on an abstract without citing and relying on the underlying scientific document is generally inappropriate when both are prior art.

The MPEP emphasizes the importance of obtaining and analyzing the full text document, stating, “obtaining and considering full text documents at the earliest practicable time in the examination process will yield the fullest available set of facts upon which to determine patentability, thereby improving quality and reducing pendency.“

In limited circumstances, a non-final Office action may be based on the abstract alone, but the full text document and translation (if necessary) should be supplied in the next Office action.

To learn more:

• prior art
• abstracts
• patent examination
• MPEP guidelines