Appeal No. 2001-0983 Page 6
Application No. 08/954,946
Searching the prior art is an integral part of the examination process. See
MPEP §§ 704.01 (“After reading the specification and claims, the examiner
searches the prior art.”); 904 (“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.”); and 904.02 (“A proper field of
search normally includes the subclass in which the claimed subject matter of an
application would be properly classified.”). The field of search must be recorded
to ensure a complete administrative record. See MPEP § 719.05:
In the first action on the merits of an application, the examiner shall
make an initial endorsement in black ink, in the space provided on
the right outside panel of the file wrapper, of the classes and
subclasses of domestic and foreign patents, abstract collections,
and publications in which the search for prior art was made. . . .
In order to provide a complete, accurate, and uniform record of
what has been searched and considered by the examiner for each
application, the U.S. Patent and Trademark Office has established
procedures for recording search data in the application file. Such a
record is of importance to anyone evaluating the strength and
validity of a patent, particularly if the patent is involved in litigation.
Upon return of this application, the examiner should conduct a thorough
search of the patent and nonpatent literature to determine whether there are prior
art references that are more germane than the Merck Index to the patentability of
the pending claims.
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