Citation and Consideration of References Cited in Original Patent

In a reissue application, the examiner should consider all references that

have been cited during the original prosecution of the patent, and list on a PTO-892 form

any reference again cited/applied in the reissue application. See

MPEP § 1455

. 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.

Should applicants wish to

ensure

that all of the

references which were cited in the original patent are considered and cited in the reissue

application, an information disclosure statement (IDS) in compliance with

37 CFR 1.97

and

1.98

should be filed in the reissue application. See

MPEP §

609

. The requirement for a copy of each U.S. patent or U.S.

patent application publication listed in an IDS has been eliminated, unless required by the

Office.

37 CFR

1.98(a)(2)

requires a legible copy of:

(A) each foreign patent;

(B) each publication or that portion which caused it to be listed, other

than U.S. patents and U.S. patent application publications unless required by the

Office;

(C) for each cited pending unpublished U.S. application, the application

specification including the claims, and any drawing of the application, or that

portion of the application which caused it to be listed including any claims directed

to that portion; and

(D) all other information or that portion which caused it to be

listed.

See

MPEP §

609.04(a)

. The Office imposes no responsibility on a reissue

applicant to resubmit, in a reissue application, all the references cited in the patent for

which reissue is sought. Rather, applicant has a continuing duty under

37 CFR 1.56

to timely

apprise the Office of any information which is material to the patentability of the claims

under consideration in the reissue application. See

MPEP § 1418

.

Where a copy of a reference other than a U.S. patent or U.S

pplicant to resubmit, in a reissue application, all the references cited in the patent for

which reissue is sought. Rather, applicant has a continuing duty under

37 CFR 1.56

to timely

apprise the Office of any information which is material to the patentability of the claims

under consideration in the reissue application. See

MPEP § 1418

.

Where a copy of a reference other than a U.S. patent or U.S. patent

application publication that was cited in the original patent is not available and cannot

be obtained through any source other than the reissue applicant (who has not submitted the

copy), the examiner will not consider that reference and therefore, will not list that

reference on the PTO-892 form. If that reference was listed by the reissue applicant on a

PTO/SB/08 form but a copy has not been provided, the examiner will line-through the

reference to indicate that the reference has not been considered.

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