904 How to Search [R-07.2022]
The examiner, after having obtained a thorough understanding of the invention disclosed and claimed in the nonprovisional application, then searches the prior art as disclosed in patents and other published documents, i.e., nonpatent literature (NPL). Any document used in the rejection of a claim is called a reference. An inventor name search should be made to identify other applications and/or patents which may be applicable as references for double patenting rejections. See MPEP § 804.
In all continuing applications, the parent applications must be reviewed by the examiner for pertinent prior art. The examiner must consider prior art which was cited and considered in the parent application. See MPEP §§ 609.02 and 2001.06(b). Where the cited prior art of a parent application has been reviewed, this fact should be made of record in accordance with the procedure set forth at paragraph (J) of MPEP § 719.05, subsection II.A. The examiner must also review the file wrapper history and prior art contained in certain proceedings and specific documents in related PTAB post-grant proceedings. See MPEP § 904.04. For national stage applications filed under 35 U.S.C. 371, the examiner will consider the documents cited in an international search report when the Form PCT/DO/EO/903 indicates that both the international search report and the copies of the documents are present in the national stage application file. See MPEP § 609.03. The first search should cover the invention as described and claimed, including the inventive concepts toward which the claims appear to be directed. It should not be extended merely to add immaterial variants. The examiner’s first Office action on the merits of an application relies on references identified in this initial search.
Following the first Office action, the examiner need not ordinarily make a second search of the prior art, unless necessitated by amendments to the claims by the applicant in a reply to the first Office action, except to check to determine whether any reference which would appear to be substantially more pertinent than the prior art cited in the first Office action has become available subsequent to the initial prior art search.
In the first action on the merits of an application, the examiner must complete the “Search Notes” form to include the classification locations of domestic and foreign patents, abstract collections, and publications in which the search for prior art was made. Other information collections and sources in which the search for prior art was made must also be identified by the examiner. The examiner must also indicate the date(s) on which the search was conducted. Note MPEP § 719.05.
In subsequent actions, where the search is brought up-to-date and/or where a further search is made, the examiner must indicate on the IFW search notes form that the search has been updated and/or identify the additional field(s) of search. See MPEP § 719.05. Any search updates should include all of the relevant or pertinent databases and the search queries and classifications employed in the original search.