TMEP 710.01: Evidence Supporting Refusal or Requirement

October 2017 Edition of the TMEP

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710.01    Evidence Supporting Refusal or Requirement

In general, the examining attorney must always support his or her action with relevant evidence and ensure that proper citations to the evidence are made in the Office action.

All evidence that the examining attorney relies on in making a requirement or refusal must be placed in the record and copies must be sent to the applicant.

In appropriate cases, the examining attorney may also present evidence that may appear contrary to the USPTO’s position, with an appropriate explanation as to why this evidence was not considered controlling.  In some cases, this may foreclose objections from an applicant and present a more complete picture if there is an appeal. Cf. In re Federated Dep't Stores Inc., 3 USPQ2d 1541, 1542 n.2 (TTAB 1987) (noting that the examining attorney is not obligated to provide every story found in a LexisNexis® search though it may present a more complete picture).