PREPARATION OF THE CASE FOR PUBLICATION

In preparing the reexamination file for publication of the certificate, the examiner must review the reexamination and patent files (IFW and paper files) to be sure that all the appropriate parts are completed. The review should include completion of the following items:

(A) The IFW file wrapper Search Notes form - The "SEARCHED" and the "SEARCH NOTES" boxes are to be filled in with the classes and subclasses that were actually searched and other areas consulted. See MPEP § 719.05.

(B) The IFW file jacket form - Check to be sure that the necessary data is included thereon. The "Litigation Review" and "Copending Office Proceedings" boxes should be completed to ensure that the Office is aware of prior or concurrent litigation and Office proceedings.

(C) The Bibliographic Data Sheet - Check to be sure that the data included thereon is correct and the blank spaces have been initialed.

(D) The Issue Classification IFW form - The form must be completed to set forth the status of each claim and the final claim numbers. The appropriate information must be included in the "Issue Classification" box. The current international classification and U.S. classification must be inserted for both the original classification and all cross-references. Completion of the Issue Classification box is required, even if all of the claims are canceled.

An appropriate drawing figure is to be indicated for printing on the certificate cover sheet and in the Official Gazette. In addition, a representative claim which has been reexamined is to be indicated for publication in the Official Gazette. The claim or claims for the Official Gazette should be selected in accordance with the following instructions:

(A) The broadest claim should be selected;

(B) Examiners should ordinarily designate but one claim on each invention, although when a plurality of inventions are claimed in one application, additional claims up to a maximum of five may be designated for publication. In the case of reexamination, the examiner must select only one claim;

(C) A dependent claim should not be selected unless the independent claim from which it depends is also printed. In the case where a multiple dependent claim is selected, the entire chain of claims for one embodiment should be listed. In the case of reexamination, a dependent patent claim may be selected where the independent original patent claim has been canceled; in such a case, the dependent claim would be printed while the independent claim would not be printed; and

(D) In reissue applications, the broadest claim with changes or the broadest additional reissue claim should be selected for printing.

When recording this information in the box provided, the following items should be kept in mind:

(A) Write the claim number clearly in black ink;

(B) If multiple claims are selected, the claim numbers should be separated by commas; and

(C) The claim designated must be referred to by using the renumbered patent claim number rather than the original application claim number.

If the patent owner desires the names of the attorneys or agents, or law firm, to be printed on the certificate, a separate paper limited to this issue which lists the names and positively states that they should be printed on the certificate must be filed. A mere power of attorney or change of address is not a request that the name appear on the certificate.

The examiner must also complete a checklist, form PTO-1516, for the reexamination file which will be forwarded to the Office of *>Data Management< identifying information used in printing the reexamination certificate. A copy of this form may be obtained from the **>CRU SPE or TC QAS or their support staff<.

The examiner should inspect the title report, or patent abstract of title, in the file. If the title report, or patent abstract of title, indicates a title in the inventors, but the patent copy shows an assignment to an assignee, a telephone call can be made to the patent owner, and the patent owner can be asked to submit a statement under 37 CFR 3.73(b) indicating that title is in the assignee (i.e., it has not reverted back to the inventors). See MPEP § 320.

After the examiner has prepared the NIRC and attachments for mailing, completed the review and preparation of the case as discussed above, and completed the Examiner Checklist form PTOL-1516, the reexamination and patent files will be given to the reexamination clerk. The reexamination clerk will complete the Reexamination Clerk Checklist form PTO-1517. The reexamination clerk will revise and update the files. The clerk should check to see if any changes in especially:

(A) the title;