mpep - chapter 2600 - optional inter partes reexamination · reexamination and inter partes review...

Chapter 2600 Optional Inter Partes Reexamination

Introduction2601 Flowcharts2601.01

Citation of Prior Art2602 [Reserved]2603

-2608 Inter Partes Reexamination2609 Request for Inter Partes Reexamination2610 Time for Requesting Inter PartesReexamination

2611

Persons Who May File a Request2612 Representative of Requester2613 Content of Request for Inter PartesReexamination

2614

Fee for Requesting Inter PartesReexamination

2615

Substantial New Question ofPatentability/Reasonable LikelihoodThat Requester Will Prevail

2616

Statement in the Request ApplyingPrior Art

2617

Copies of Prior Art (Patents andPrinted Publications)

2618

Copy of Printed Patent2619 Certificate of Service2620 [Reserved]2621 Address of Patent Owner2622 Withdrawal of Attorney or Agent2623 Correspondence2624 Untimely Paper Filed Prior to FirstOffice Action

2625

Initial Processing of Request for InterPartes Reexamination

2626

Incomplete Request for Inter PartesReexamination

2627

[Reserved]2628 Notice of Request for Inter PartesReexamination in Official Gazette

2629

Constructive Notice to Patent Owner2630 Processing of Request Corrections2631 Public Access2632

Determining If a ReexaminationRequest Was Filed for a Patent

2632.01

[Reserved]2633 Fee Processing and Procedure2634 Record Systems2635 Assignment of Reexamination2636 [Reserved]2637 Time Reporting2638 [Reserved]2639 Decision on Request2640 Time for Deciding Request2641

Criteria for Deciding Request2642 Claims Considered in Deciding Request2643 Prior Art on Which the DeterminationIs Based

2644

[Reserved]2645 Decision Ordering Reexamination2646 Decision Denying Reexamination2647

Examples of Decisions on Requests2647.01 Processing of Decision2647.02

Petition From Denial of Request2648 [Reserved]2649

-2653 Conduct of Inter Partes ReexaminationProceedings

2654

Who Reexamines2655 Prior Art Patents and PrintedPublications Reviewed by Examiner inReexamination

2656

Listing of Prior Art2657 Scope of Inter Partes Reexamination 2658 Res Judicata and Collateral Estoppelin Reexamination Proceedings

2659

First Office Action2660 [Reserved]2660.01 The Title2660.02 Dependent Claims2660.03

Special Status for Action2661 Time for Response and Comments2662 [Reserved]2663 Mailing of Office Action2664 Extension of Time for Patent OwnerResponse

2665

Patent Owner Response to OfficeAction

2666

Amendment by Patent Owner2666.01 Correction of Patent Drawings2666.02 Correction of Inventorship2666.03 Fees for Adding Claims2666.04 Third Party Comments After PatentOwner Response

2666.05

Service of Papers2666.06 [Reserved]2666.07

-2666.09 Patent Owner Does Not Respond toOffice Action

2666.10

[Reserved]2666.11-2666.19

Third Party Does Not Comment AfterPatent Owner Response

2666.20

[Reserved]2666.21-2666.29

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Submission Not Fully Responsive toNon-final Office Action

2666.30

[Reserved]2666.31-2666.39

Patent Owner Completion ofResponse and Third Party CommentsThereon

2666.40

[Reserved]2666.41-2666.49

Examiner Issues Notice of DefectivePaper in Inter Partes Reexamination

2666.50

[Reserved]2666.51-2666.59

Response by Patent Owner/ThirdParty to Notice of Defective Paper

2666.60

Handling of Inappropriate or UntimelyFiled Papers

2667

Petition for Entry of Late Papers forRevival of Reexamination Proceeding

2668

[Reserved]2669 Clerical Handling2670 Examiner Action FollowingResponse/Comments or Expiration ofTime for Same

2671

Examiner Issues Action on MeritsThat Does Not Close Prosecution

2671.01

Examiner Issues Action ClosingProsecution (ACP)

2671.02

Panel Review2671.03 Patent Owner Comments/AmendmentAfter ACP and Third Party RequesterResponsive Comments

2672

Examiner Consideration of SubmissionsAfter ACP and Further Action

2673

Reopening Prosecution After ACP2673.01 Examiner Issues Right of AppealNotice (RAN)

2673.02

Appeal in Inter Partes Reexamination2674 Cross Appeal After Original Appeal2674.01

Appellant Brief2675 Respondent Brief2675.01 Informalities in One or More of theBriefs

2675.02

Appeal Conference2676 Examiner’s Answer2677 Rebuttal Briefs2678 Office Treatment of Rebuttal Brief2679 Oral Hearing2680 Board Decision2681 Action Following Decision2682 Appeal to Courts2683

Information Material to Patentabilityin Reexamination Proceeding

2684

No Interviews on Merits in Inter PartesReexamination Proceedings

2685

Notification of Existence of Prior orConcurrent Proceedings and DecisionsThereon

2686

Multiple Copending ReexaminationProceedings

2686.01

Copending Reexamination andInterference Proceedings

2686.02

Copending Reexamination andReissue Proceedings

2686.03

Reexamination and LitigationProceedings

2686.04

Reexamination and Inter PartesReview Proceedings, Post-Grant

2686.05

Review, and Covered BusinessMethod Patent Review

Notice of Intent to Issue Inter PartesReexamination Certificate (NIRC) and

2687

Conclusion of ReexaminationProceeding

Examiner Consideration ofSubmissions After NIRC

2687.01

Issuance of Inter Partes ReexaminationCertificate

2688

Reexamination Review2689 Format of Inter Partes ReexaminationCertificate

2690

Notice of Inter Partes ReexaminationCertificate Issuance in Official Gazette

2691

Distribution of Certificate2692 Intervening Rights2693 Concluded Reexamination Proceedings2694 Reexamination of a Reexamination2695 USPTO Forms To Be Used in InterPartes Reexamination

2696

2601 Introduction [R-07.2015]

The reexamination statute was amended onNovember 29, 1999 by the American InventorsProtection Act of 1999 (the AIPA), Public Law106-113. The AIPA expanded reexamination byproviding an “ inter partes” option; it authorized theextension of reexamination proceedings via anoptional inter partes reexamination procedure inaddition to the existing ex parte reexaminationprocedure. See Title IV, subtitle F (§§ 4601 through

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MANUAL OF PATENT EXAMINING PROCEDURE§ 2601

4608) of the “Intellectual Property andCommunications Omnibus Reform Act of 1999,” S.1948 (106th Cong. 1st Sess. (1999)). Section1000(a)(9), Division B, of Public Law 106-113incorporated and enacted into law the “IntellectualProperty and Communications Omnibus Reform Actof 1999” (S. 1948). As a result, new sections311-318 of title 35 United States Code directed tothe optional inter partes reexamination proceedingwere added by Public Law 106-113. Thereexamination statute was again amended onNovember 2, 2002, by Public Law 107-273, 116Stat. 1758, 1899-1906 (2002). Public Law 107-273expanded the scope of what qualifies for a substantialnew question of patentability upon which areexamination may be based (see MPEP § 2642,POLICY IN SPECIFIC SITUATIONS, part A),expanded the third party requester’s appeal rights toinclude appeal to the U.S. Court of Appeals for theFederal Circuit (see MPEP § 2679), and madetechnical corrections to the statute. See the 21stCentury Department of Justice AppropriationsAuthorization Act, TITLE III - INTELLECTUALPROPERTY, Subtitle A - Patent and TrademarkOffice, Sections 13105 and 13106, of the “Patentand Trademark Office Authorization Act of 2002”- Enacted as part of Public Law 107-273 onNovember 2, 2002.

The present chapter is directed to inter partesreexamination procedure.

Upon enactment of the AIPA, 35 U.S.C. 312(a)provided, as to the standard for granting an interpartes reexamination request, that “the Director shalldetermine whether a substantial new question ofpatentability affecting any claim of the patentconcerned is raised by the request, with or withoutconsideration of other patents or printedpublications….” The Office has referred to thisstandard as “SNQ.”

The Leahy-Smith America Invents Act (the AIA),Public Law 112-29, 125 Stat. 284, was enactedSeptember 16, 2011. Section 6(c) of the AIAreplaced the inter partes reexamination process,effective September 16, 2012, with a new interpartes review process, such that on or afterSeptember 16, 2012 the Office no longer entertainsrequests for inter partes reexamination but instead

accepts petitions to conduct inter partes review. Forany inter partes reexamination filed prior toSeptember 16, 2012, the provisions of 35 U.S.C. 311– 35 U.S.C. 318 as they were in effect prior toSeptember 16, 2012, continue to apply to the interpartes reexamination proceedings.

Section 6(c)(3)(B) of the AIA provided a one yeartransition period (from inter partes reexaminationto inter partes review) beginning September 16,2011 and ending September 15, 2012, during which inter partes reexamination filings would continueto be accepted, but the standard for granting an interpartes reexamination request was revised to require,pursuant to 35 U.S.C. 312, that the informationpresented in a request for inter partes reexaminationmust show that there is a reasonable likelihood thatthe requester will prevail with respect to at least oneof the claims challenged in the request.

As a result of the enactment of section 6(c) of theAIA, the following applies for inter partesreexamination:

1. Inter partes reexamination requests filed priorto September 16, 2011: With respect to any interpartes reexamination proceeding for which a requestwas been filed prior to September 16, 2011, the SNQstandard is the standard that was applicable indetermining whether the request for inter partesreexamination would be granted. For reexaminationsordered based on the SNQ standard, the SNQstandard applies throughout the reexaminationproceeding, even after September 16, 2011, orSeptember 16, 2012. In addition, the inter partesreexamination provisions of 35 U.S.C. chapter 31,as amended by section 6(c)(3) of the Leahy-SmithAmerica Invents Act, and 37 CFR §§ 1.902 - 1.997and 41.60 - 41.81, except for the changes made inthe Office Notice - Revision of Standard forGranting an Inter Partes Reexamination Request,76 FR 59055 (September 23, 2011) (Final Rule) (i.e.,with reference to the change in the standard forgranting inter partes reexamination, and thetermination of filing inter partes reexaminationrequests), apply throughout the reexamination, evenafter September 16, 2011, or September 16, 2012.Any citation to the rules in this chapter will beinterpreted accordingly.

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§ 2601OPTIONAL INTER PARTES REEXAMINATION

2. Inter partes reexamination requests filed onor after September 16, 2011, but before September16, 2012: With respect to any inter partesreexamination proceeding for which a request wasfiled on or after September 16, 2011, the “reasonablelikelihood” standard is the standard that wasapplicable in determining whether the request for inter partes reexamination would be granted. Forreexaminations ordered based on the “reasonablelikelihood” standard, then the “reasonablelikelihood” standard applies throughout thereexamination proceeding, even after September 16,2012. In addition, the inter partes reexaminationprovisions of 35 U.S.C. chapter 31, as amended bysection 6(c)(3) of the Leahy-Smith America InventsAct, and 37 CFR §§ 1.902 - 1.997 and 41.60 - 41.81,including the changes made in the Office Notice - Revision of Standard for Granting an Inter PartesReexamination Request, 76 FR 59055 (September23, 2011) (Final Rule), apply throughout thereexamination, even after September 16, 2012. Anycitation to the rules in this chapter will be interpretedaccordingly.

3. Inter partes reexamination requests filed onor after September 16, 2012: With respect to anyinter partes reexamination proceeding for which arequest is submitted on or after September 16, 2012,the Office cannot grant, or even accord a filing dateto, the request. See 37 CFR 1.913. In other words,the Office no longer entertains requests for interpartes reexamination but instead will accept petitionsto conduct inter partes review, where appropriate.

For a patent issued from an application filed priorto November 29, 1999, the statutory inter partes

reexamination option is not available, only the exparte reexamination is available as a reexaminationoption (see 37 CFR, Sub-part D, 37 CFR 1.510 etseq.).

All citations in this chapter to 35 U.S.C. Chapter 31(i.e., 35 U.S.C. 311-318) are to the relevant statutein effect for inter partes reexamination prior toSeptember 16, 2012.

See MPEP Chapter 2200 (§ 2209 et seq.) forguidance on the procedures for ex partereexamination proceedings.

2601.01 Flowcharts [R-07.2015]

The flowcharts show the general flow for the variousstages of inter partes reexamination proceedings.The first flowchart shows the procedures beforeappeal for a reexamination filed prior to September16, 2011 (e.g., under the SNQ standard). Except forthe standard for instituting reexamination, the sameprocedure pertains for an inter partes reexaminationfiled from September 16, 2011 through September15, 2012. The second flowchart shows the appealprocedure with a single third party requester. Thethird flowchart shows the procedures following aBoard decision for reexamination proceedingscommenced prior to November 2, 2002. The fourthflowchart shows the procedures following a Boarddecision for reexamination proceedings commencedon or after November 2, 2002.

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MANUAL OF PATENT EXAMINING PROCEDURE§ 2601.01

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§ 2601.01OPTIONAL INTER PARTES REEXAMINATION

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2602 Citation of Prior Art [R-07.2015]

37 CFR 1.902 Processing of prior art citations during aninter partes reexamination proceeding.

Citations by the patent owner in accordance with § 1.933 andby an inter partes reexamination third party requester under §1.915 or § 1.948 will be entered in the inter partes reexamination file. The entry in the patent file of other citationssubmitted after the date of an order for reexamination pursuantto § 1.931 by persons other than the patent owner, or the thirdparty requester under either § 1.913 or § 1.948, will be delayeduntil the inter partes reexamination proceeding has beenconcluded by the issuance and publication of a reexaminationcertificate. See § 1.502 for processing of prior art citations inpatent and reexamination files during an ex parte reexaminationproceeding filed under § 1.510.

American Inventors Protection Act of 1999 (theAIPA) did not affect the manner of the public’scitation of prior art under 37 CFR 1.501 in a patent.Likewise, it did not affect the Office’s handling ofa 37 CFR 1.501 prior art citation in a patent whereno reexamination proceeding is pending for thatpatent when the citation is filed.

Where an inter partes reexamination proceeding ispending when a prior art citation is filed, thefollowing applies:

If the prior art citation satisfies 37 CFR 1.501 andwas submitted prior to an order for reexamination,the cited documents (citations) will be consideredin an inter partes reexamination proceeding as aprior art citation would be considered in an ex partereexamination proceeding. See MPEP § 2206.

If the prior art citation satisfies 37 CFR 1.501 andis submitted after an order for reexamination, thecitation will be treated as follows:

(A) A patent owner citation will normally beconsidered if it is submitted in time to do so beforethe reexamination certificate issues.

(B) A third party requester citation will beconsidered if it is submitted as part of a third partyrequester comments submission under 37 CFR 1.947or 1.951(b) (made as required by 37 CFR 1.948), orin a properly filed request for reexamination under37 CFR 1.915 or 1.510 (whose art is subject toconsideration in the ongoing inter partesreexamination being examined).

(C) Any other prior art citation satisfying 37CFR 1.501 which is submitted after an order toreexamine will be retained (stored) until thereexamination is concluded by the issuance andpublication of a reexamination certificate, afterwhich it will be placed in the file of the patent.37 CFR 1.902.

The Leahy-Smith America Invents Act (the AIA),Public Law 112-29, 125 Stat. 284, enactedSeptember 16, 2011, provided, under 35 U.S.C.301(a)(2) for submission of “statements of the patentowner filed in a proceeding before a federal courtor the Office in which the patent owner took aposition on the scope of any claim of a particularpatent”; however, there is no provision of the statutethat applies a submission under 35 U.S.C. 301(a)(2)to an ongoing inter partes reexamination. Thus, asubmission under 35 U.S.C. 301(a)(2) is not properfor an inter partes reexamination.

See MPEP §§ 2202 through 2206 and 2208 for themanner of making such citations and Office handlingof same.

2603 - 2608 [Reserved]

2609 Inter Partes Reexamination [R-07.2015]

The inter partes reexamination statute and rulespermit any third party requester to request, prior toSeptember 16, 2012, inter partes reexamination ofa patent which issued from an original applicationfiled on or after November 29, 1999, where therequest contains certain elements (see 37 CFR1.915(b)) and is accompanied by the fee requiredunder 37 CFR 1.20(c)(2). The Office initiallydetermines whether the standard for grantingreexamination (see 35 U.S.C. 312(a)) is met. If yes,reexamination will be ordered. The reexaminationproceedings which follow the order forreexamination are somewhat similar to regularexamination procedures in patent applications;however, there are notable differences. For example,there are certain limitations as to the kind ofrejections which may be made, a third party requestermay participate throughout the proceeding, there isan “action closing prosecution” and a “right of

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appeal notice” rather than a final rejection, specialreexamination forms are to be used, and time periodsare set to provide “special dispatch.” When theprosecution of an inter partes reexaminationproceeding is terminated, an inter partesreexamination certificate is issued to indicate thestatus of all claims following the reexamination andconcludes the reexamination proceeding.

The basic characteristics of inter partesreexamination are as follows:

(A) Any third party requester, prior to September16, 2012, can request inter partes reexamination atany time during the period of enforceability of thepatent (for a patent issued from an originalapplication filed on or after November 29, 1999);

(B) Prior art considered during reexaminationis limited to prior patents or printed publicationsapplied under the appropriate parts of 35 U.S.C. 102and 103;

(C) The standard for granting reexamination (35U.S.C. 312(a)) must be met for reexamination to beordered;

(D) If ordered, the actual reexaminationproceeding is essentially inter partes in nature;

(E) Decision on the request must be made notlater than three months from its filing date, and theremainder of proceedings must proceed with “specialdispatch” within the Office;

(F) If ordered, a reexamination proceeding willnormally be conducted to its conclusion and theissuance of an inter partes reexamination certificate;

(G) The scope of the patent claims cannot beenlarged by amendment;

(H) Reexamination and patent files are open tothe public, but see paragraph (I) below;

(I) The reexamination file is scanned to providean electronic copy of the file, which is the Officialfile of the proceeding. All public access to andcopying of reexamination proceedings may be hadfrom the electronic copy.

Patent owners and third party requesters arecautioned that the reexamination statute, regulations,and published examining procedures do notcountenance so-called “litigation tactics” inreexamination proceedings. The parties are expected

to conduct themselves accordingly. For example, itis expected that submissions of papers that are notprovided for in the reexamination regulations and/orappear to be excluded by the regulation will eitherbe filed with an appropriate petition to accept thepaper and/or waive the regulation(s), or not filed atall. Parties are advised that multiple submissions,such as a reply to a paper opposing a petition and asur-reply directed to such a reply are not providedfor in the regulations or examining proceduresgoverning inter partes reexamination. It is expectedthat the parties will adhere to the provisions of 37CFR 11.18(b) throughout the course of areexamination proceeding.

2610 Request for Inter Partes Reexamination[R-11.2013]

No requests for inter partes reexamination may befiled on or after September 16, 2012. Guidance onthe former practice is available in revision 7 of the

8th Edition of the MPEP and in Revision ofStandard for Granting an Inter PartesReexamination Request, 76 FR 59055 (September23, 2011).

2611 Time for Requesting Inter PartesReexamination [R-11.2013]



2612 Persons Who May File a Request[R-11.2013]



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2613 Representative of Requester[R-08.2012]

37 CFR 1.915 Content of request for inter partesreexamination.

*****

(c) If an inter partes request is filed by an attorney or agentidentifying another party on whose behalf the request is beingfiled, the attorney or agent must have a power of attorney fromthat party or be acting in a representative capacity pursuant to§ 1.34.

*****

Where an attorney or agent files a request for aninter partes reexamination for an identified client(the third party requester), he or she may act undera power of attorney from the client or may act in arepresentative capacity under 37 CFR 1.34 . See37 CFR 1.915(c). While the filing of the power ofattorney is desirable, processing of the reexaminationrequest will not be delayed due to its absence.

In order to act in a representative capacity under 37CFR 1.34, an attorney or agent must set forth his orher registration number, name, and signature. Inorder to act under a power of attorney from arequester, an attorney or agent must be providedwith a power of attorney. 37 CFR 1.32(c) providesthat a “power of attorney may only name asrepresentative” the inventors or registered patentpractitioners. Thus, an attorney or agent representinga requester must be a registered patent practitioner.

If any question of authority to act is raised, proof ofauthority may be required by the Office.

All correspondence for a third party requester isaddressed to the representative of the requester,unless a specific indication is made to forwardcorrespondence to another address.

A third party requester may not be representedduring a reexamination proceeding by an attorneyor other person who is not registered to practicebefore the Office.

2614 Content of Request for Inter PartesReexamination [R-11.2013]

No requests for inter partes reexamination may befiled on or after September 16, 2012. Guidance on

the former practice is available in revision 7 of the


2615 Fee for Requesting Inter PartesReexamination [R-11.2013]



2616 Substantial New Question ofPatentability/Reasonable Likelihood ThatRequester Will Prevail [R-11.2013]



2617 Statement in the Request ApplyingPrior Art [R-11.2013]



2618 Copies of Prior Art (Patents andPrinted Publications) [R-11.2013]


8th Edition of the MPEP and in Revision of

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Standard for Granting an Inter PartesReexamination Request, 76 FR 59055 (September23, 2011).

2619 Copy of Printed Patent [R-11.2013]



2620 Certificate of Service [R-11.2013]



2621 [Reserved]

2622 Address of Patent Owner [R-10.2019]

37 CFR 1.33 Correspondence respecting patent applications,reexamination proceedings, and other proceedings.

*****

(c) All notices, official letters, and other communicationsfor the patent owner or owners in a reexamination orsupplemental examination proceeding will be directed to thecorrespondence address in the patent file. Amendments filed ina reexamination proceeding, and other papers filed in areexamination or supplemental examination proceeding, onbehalf of the patent owner must be signed by the patent owner,or if there is more than one owner by all the owners, or by anattorney or agent of record in the patent file, or by a registeredattorney or agent not of record who acts in a representativecapacity under the provisions of § 1.34. Double correspondencewith the patent owner or owners and the patent owner’s attorneyor agent, or with more than one attorney or agent, will not beundertaken.

*****

Address of Patent Owner: The correspondenceaddress for the patent to be reexamined, or being

reexamined is the correct address for all notices,official letters, and other communications for patentowners in reexamination proceedings. See 37 CFR1.33(c).

Representative of Patent Owner: As a general rule,the attorney-client relationship terminates when thepurpose for which the attorney was employed isaccomplished; e.g., the issuance of a patent to theclient. However, under 37 CFR 11.104, as underformer 37 CFR 10.23(c)(8), a practitioner shouldnot fail to timely and adequately inform a client orformer client of correspondence received from theOffice in a proceeding before the Office or from theclient’s or former client’s opponent in an interpartes proceeding before the Office when thecorrespondence (i) could have a significant effecton a matter pending before the Office, (ii) is receivedby the practitioner on behalf of a client or formerclient , and (iii) is correspondence of which areasonable practitioner would believe under thecircumstances the client or former client should benotified. This responsibility of a practitioner to aformer client is not eliminated by withdrawing asan attorney or agent of record. See also 37 CFR1.116(d). The practitioner if he/she so desires, canminimize the need for forwarding correspondenceconcerning issued patents by having thecorrespondence address changed after the patentissues if the correspondence address is thepractitioner’s address, which frequently is the casewhere the practitioner is the attorney or agent ofrecord.

If the patent owner desires that a different attorneyor agent receive correspondence, then a new powerof attorney must be filed. See MPEP § 324 forestablishing an assignee’s right to take action whensubmitting a power of attorney in applications filedbefore September 16, 2012.

Submissions to the Office to change thecorrespondence address or power of attorney in therecord of the patent should be addressed as follows:

Where a request for inter partes reexamination hasbeen filed and a reexamination proceeding isaccordingly pending as to a patent.

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Mail Stop “ Inter Partes Reexam”Attn: Central Reexamination UnitCommissioner for PatentsP.O. Box 1450Alexandria, VA 22313-1450

Where no request for reexamination has been filedand the patent is in storage:

Mail Stop Document ServicesDirector of the U.S. Patent and Trademark OfficeP.O. Box 1450Alexandria, VA 22313-1450

It is strongly recommended that the Mail Stopinformation be placed in a prominent position on thefirst page of each paper being filed utilizing asufficiently large font size that will direct attentionto it.

Sample forms for changing correspondence addressor power of attorney for the patent owner, and forthe third party requester are set forth below.

Form PTO/AIA/81B Reexamination or SupplementalExamination – Patent Owner Power of Attorney orRevocation of Power of Attorney with a New Powerof Attorney and Change of Correspondence Addressfor Reexamination or Supplemental Examinationand Patent

Form PTO/SB/81C Reexamination – Third PartyRequester Power of Attorney or Revocation of Powerof Attorney with a New Power of Attorney andChange of Correspondence Address

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2623 Withdrawal of Attorney or Agent[R-10.2019]

For a practitioner to withdraw from a patent and/orreexamination proceeding, the Office no longerrequires that there be at least 30 days remaining inany running period for response between theapproval of a request to withdraw fromrepresentation and the expiration date of any runningperiod for response. Instead, pursuant to 37 CFR11.116, the Office requires the practitioner(s) tocertify that he, she or they have: (1) given reasonablenotice to the client, prior to the expiration of theresponse period, that the practitioner(s) intends to

withdraw from employment; (2) delivered to theclient or a duly authorized representative of the clientall papers and property (including funds) to whichthe client is entitled; and (3) notified the client ofany responses that may be due and the time framewithin which the client must respond. “Reasonablenotice” would allow a reasonable amount of timefor the client to seek the services of anotherpractitioner prior to the expiration of any applicableresponse period. See also MPEP § 402.06.

A sample form for a request by an attorney or agentof record to withdraw from a patent is set forthbelow.

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2624 Correspondence [R-10.2019]

All requests for inter partes reexamination (originalrequest papers) and all subsequent inter partes reexamination correspondence mailed to the U.S.Patent and Trademark Office via the U.S. PostalService Mail, other than correspondence to theOffice of the General Counsel pursuant to 37 CFR1.1(a)(3) and 1.302(e), should be addressed:

Mail Stop “ Inter Partes Reexam”Attn: Central Reexamination UnitCommissioner for PatentsP.O. Box 1450Alexandria, VA 22313-1450

All such correspondence hand carried to the Office,or submitted by delivery service (e.g., FederalExpress, DHL, etc., which are commercial mail ordelivery services) should be carried to:

Customer Service WindowRandolph Building401 Dulany StreetAlexandria, VA 22314

Hand-carried correspondence and correspondencesubmitted by delivery service should also be marked“Mail Stop Inter Partes Reexam.” Whether thecorrespondence is mailed via the U.S. Postal Servicemail or is hand-carried to the Office, it is stronglyrecommended that the Mail Stop information beplaced in a prominent position on the first page ofeach paper being filed utilizing a sufficiently largefont size that will direct attention to it.

A request for inter partes reexamination may notbe sent by facsimile transmission (FAX). See 37CFR 1.6(d)(5). This is also true for acorrected/completed request sent in response to anotice that the original request was not filing datecompliant, since the corrected/completed requeststands in place of, or is a completion of, the originalrequest papers. All subsequent inter partesreexamination correspondence, however, may beFAXed to:

Central Reexamination Unit(571) 273-9900.

Effective July 9, 2007, the U.S. Patent andTrademark Office began accepting requests forreexamination, and “follow-on” papers (i.e.,

subsequent correspondence in reexaminationproceedings) submitted via the Office’s Web-basedelectronic filing system (EFS-Web). The Office hasupdated the Legal Framework for EFS-Web(available at www.uspto.gov/patents-application-process/filing-online/legal-framework-efs-web)to set forth that requests for reexamination, andreexamination “follow-on” papers are permitted tobe submitted using EFS-Web.

After the filing of the request for inter partesreexamination, any letters sent to the Office relatingto the reexamination proceeding should identify theproceeding by the number of the patent undergoingreexamination, the reexamination request controlnumber assigned, the name of the examiner, and theexaminer’s Art Unit.

The certificate of mailing and transmissionprocedures (37 CFR 1.8) may be used to file anypaper in an inter partes reexamination proceeding,except for a request for reexamination and acorrected/replacement request for reexamination.See MPEP § 512 as to the use of the certificate ofmailing and transmission procedures. The Priority

Mail Express® mailing procedure (37 CFR 1.10)may be used to file any paper in an inter partesreexamination proceeding. See MPEP § 513 as to

the use of the Priority Mail Express® mailingprocedure.

Communications from the Office to the patent ownerwill be directed to the correspondence address forthe patent being reexamined. See 37 CFR 1.33(c).

Amendments and other papers filed on behalf ofpatent owners must be signed by the patent owners,or the registered attorney or agent of record in thepatent file, or any registered attorney or agent actingin a representative capacity under 37 CFR 1.34.

Double correspondence with the patent owners andthe attorney or agent normally will not be undertakenby the Office.

Where no correspondence address is otherwisespecified, correspondence will be with the mostrecent attorney or agent made of record by the patentowner.

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https://www.uspto.gov/patents-application-process/filing-online/legal-framework-efs-web

https://www.uspto.gov/patents-application-process/filing-online/legal-framework-efs-web

Note MPEP § 2620 for certificate of service.

See MPEP § 2224 for correspondence in ex partereexamination proceedings.

2625 Untimely Paper Filed Prior to FirstOffice Action [R-07.2015]

37 CFR 1.939 Unauthorized papers in inter partesreexamination

(a) If an unauthorized paper is filed by any party at anytime during the inter partes reexamination proceeding it willnot be considered and may be returned.

(b) Unless otherwise authorized, no paper shall be filedprior to the initial Office action on the merits of the inter partesreexamination.

37 CFR 1.902 Processing of prior art citations during aninter partes reexamination proceeding.

Citations by the patent owner in accordance with § 1.933 andby an inter partes reexamination third party requester under §1.915 or § 1.948 will be entered in the inter partes reexamination file. The entry in the patent file of other citationssubmitted after the date of an order for reexamination pursuantto § 1.931 by persons other than the patent owner, or the thirdparty requester under either § 1.913 or § 1.948, will be delayeduntil the inter partes reexamination proceeding has beenconcluded by the issuance and publication of a reexaminationcertificate. See § 1.502 for processing of prior art citations inpatent and reexamination files during an ex parte reexaminationproceeding filed under § 1.510.

Pursuant to 37 CFR 1.939, after filing of a requestfor inter partes reexamination, no papers directedto the merits of the reexamination other than (A)citations of patents or printed publications under 37CFR 1.501 and 1.933, (B) another complete requestunder 37 CFR 1.510, or (C) notifications pursuantto MPEP § 2686, should be filed with the Officeprior to the date of the first Office action in thereexamination proceeding. Any papers directed tothe merits of the reexamination, other than thoseunder 37 CFR 1.501, 1.933, or 1.510, or under MPEP§ 2686, filed prior to the date of the first Officeaction will be returned to the sender withoutconsideration. If the papers are entered prior todiscovery of the impropriety, such papers will beexpunged from the record. A copy of the letterproviding notification of the returned papers orexpungement will be made of record in the patentfile. However, no copy of the returned/expungedpapers will be retained by the Office. If thesubmission of the returned/expunged papers is

appropriate later in the proceedings, they may befiled, and accepted by the Office, at that time. See Patlex Corp. v. Mossinghoff, 771 F.2d 480, 226USPQ 985 (Fed. Cir. 1985); In re Knight, 217 USPQ294 (Comm’r Pat.1982); and In re Amp, 212 USPQ826 (Comm’r Pat. 1981) which addressed thesituation analogous to the present situation for exparte reexamination proceedings.

2626 Initial Processing of Request for InterPartes Reexamination [R-11.2013]



2627 Incomplete Request for Inter PartesReexamination [R-07.2015]


the former practice is available in the 9th Edition ofthe MPEP.

2628 [Reserved]

2629 Notice of Request for Inter PartesReexamination in Official Gazette[R-11.2013]



2600-24Rev. 10.2019, June 2020


2630 Constructive Notice to Patent Owner[R-07.2015]



2631 Processing of Request Corrections[R-07.2015]



2632 Public Access [R-07.2015]

Reexamination files are open to inspection by thegeneral public by way of the Public PAIR via theUSPTO Internet site. In viewing the images of thereexamination proceedings, members of the publicwill be able to view the entire content of thereexamination file with the exception of non-patentliterature. To access Public PAIR, a member of thepublic would go to the USPTO website atwww.uspto.gov.

If a copy of the reexamination file is requested, itmay be ordered from the Document ServicesDivision of the Office of Public Records (OPR).Orders for such copies must indicate the controlnumber of the reexamination proceeding. Ordersshould be addressed as follows:

Mail Stop Document ServicesDirector of the U.S. Patent and Trademark OfficeP.O. Box 1450Alexandria, VA 22313-1450

Requests for a copy of a request may also be sentvia email to: [email protected], and the cost of thecopy may be charged to a credit card or depositaccount. Alternatively, a copy may be obtained fromIFW via PAIR.

To obtain a “certified copy” of a reexamination file,a CD-ROM may be purchased from DocumentServices Division of OPR.

2632.01 Determining If a ReexaminationRequest Was Filed for a Patent [R-07.2015]

DETERMINING ON PALM IF AREEXAMINATION REQUEST HAS BEEN FILEDFOR A GIVEN PATENT NUMBER

Both the Internet and the USPTO intranet can beaccessed to determine if a reexamination request hasbeen filed for a particular patent.

Using the USPTO Intranet

From the USPTO in t r ane t s i t ehttp://ptoweb/ptointranet/index.htm, Office personnelcan click on “PALM” and then “GeneralInformation” which opens the PALM INTRANETGeneral Information Display.

From here, enter the patent number in the boxlabeled Patent #.

Click on “Search” and when the “Patent NumberInformation” appears, click on “Continuity Data” toobtain the reexamination number.

Any reexamination for the patent number will belisted.

There will be about a ten (10) day lag between filingand data entry into the PALM database.

2633 [Reserved]

2634 Fee Processing and Procedure[R-07.2015]

All fees in an inter partes reexamination proceeding(including the fee for filing the request for interpartes reexamination (see MPEP § 2615)) areprocessed by the Central Reexamination Unit (CRU).The fees will be posted by the CRU via the RevenueAccounting and Managing (RAM) program.

In an inter partes reexamination proceeding, feesare due for the request (37 CFR 1.915(a)), for theaddition of claims by the patent owner during the

Rev. 10.2019, June 20202600-25


http://www.uspto.gov/

proceeding (excess claims fees under 37 CFR1.20(c)(3) and (c)(4)), for an extension of time under37 CFR 1.956, and for any appeal, brief, and oralhearing under 37 CFR 41.20(b). All petitions filedrelating to a reexamination proceeding require fees(37 CFR 1.937(d)).

No fee is required for the issuance of a reexaminationcertificate.

Micro entity reductions are available to patentowners only. Specifically, micro entity and smallentity reductions under 35 U.S.C. 41(h)(1) areavailable to the patent owner for extension of timefees, appeal fees, brief fees, oral hearing fees, excessclaims fees, and petition fees. Small entity reductionsare available to the third party requester for petitionfees, appeal fees, brief fees, and oral hearing fees;however, micro entity reductions are not availableto third party requesters.

When a fee is required in a merged proceeding, onlya single fee is needed, even though multiple copiesof the submissions (one for each file) are required.See MPEP § 2686.01.

2635 Record Systems [R-07.2015]

The Patent Application Locating and Monitoring(PALM) system is used to support the reexaminationprocess. The sections below delineate PALM relatedactivities.

(A) Reexamination File Data on PALM - Theroutine PALM retrieval transactions are used toobtain data on reexamination files. From the USPTOintranet site, Office staff can click on “PALM” andthen “General Information” which opens the PALMINTRANET General Information Display. Fromhere, enter the patent number in the box labeledPatent #. Then click on “Search” and when the“Patent Number Information” appears, click on“Continuity Data” to obtain the reexaminationnumber.

(B) Reexamination e-File – The papers of areexamination proceeding may be viewed on IFW.PALM provides information for the reexaminationproceeding as to the patent owner and requester,contents, status, and related Office proceedings(applications, patents and reexamination

proceedings). Some of the data entry forreexamination in PALM is different from that of aregular patent application. There are also differencesin the status codes – all reexamination proceedingsgenerally have status codes in the “400” or “800”range.

(C) Patent File Location Control for PatentsNot Available on IFW, i.e., Available Only in PaperFile - The movement of paper patent files related torequests for reexamination throughout the Office ismonitored by the PALM system. If the patent file isin paper form, the paper file should be ordered andscanned into the Image File Wrapper (IFW) foraccess throughout the prosecution of thereexamination proceeding.

(D) Reporting Events to PALM - The PALMsystem is used to monitor major events that takeplace in processing reexamination proceedings. Allmajor examination events are reported. The mailingof examiner’s actions is reported, as well as owner’sresponses and third party requester comments. TheCRU technical support staff is responsible forreporting these events using the reexamination iconand window initiated in the PALM EXPO program.Examples of the events that will be reported (in thePALM system or in the tracking system of the Officeof Petitions) are as follows:

(1) Determination Mailed-Denial of requestfor reexamination;

(2) Determination Mailed-Grant of requestfor reexamination;

(3) Petition for reconsideration ofdetermination received;

(4) Decision on petition mailed-Denied;

(5) Decision on petition mailed-Granted;

(6) Mailing of all examiner actions;

(7) Patent owner responses to Office Actions

(8) Third party requester comments after apatent owner response.

Each of these events, as well as additional eventsreported by the Central Reexamination Unit (CRU)Technical Support Staff (TSS) will be permanentlyrecorded and displayed in the “Contents” portion ofPALM. In addition, status representative of theseevents will also be displayed.

2600-26Rev. 10.2019, June 2020


(E) Status Reports - Various weekly reports canbe generated for the event reporting discussed above.The primary purpose of these computer outputs isto assure that reexaminations are, in fact, processedwith “special dispatch”.

2636 Assignment of Reexamination[R-07.2015]

I. EXAMINER ASSIGNMENT OF THEREEXAMINATION PROCEEDING

Except for reexamination requests for design patents,reexamination requests are assigned to the CentralReexamination Unit (CRU) art unit which examinesthe technology (Chemical, Electrical, Mechanical,etc.) in which the patent to be reexamined iscurrently classified as an original. In that art unit,the Supervisory Patent Reexamination Specialist(SPRS) assigns the reexamination request to aprimary examiner, other than the examiner thatoriginally examined the patent (see “ExaminerAssignment Policy” below), who is most familiarwith the claimed subject matter of the patent. In anextremely rare situation, where a proceeding is stillin a Technology Center (TC) rather than the CRU,the reexamination may be assigned to an assistantexaminer if no knowledgeable primary examiner isavailable. In such an instance a primary examinermust sign all actions, conference all actions with aSPRS or TC Quality Assurance Specialist (QAS)and another examiner, and take responsibility for allactions taken.

A. Examiner Assignment Policy

It is the policy of the Office that the CRU SPRS willassign the reexamination request to an examinerdifferent from the examiner(s) who examined thepatent application. Thus, under normalcircumstances, the reexamination request will notbe assigned to a primary examiner or assistantexaminer who was involved in any part of theexamination of the patent for which reexaminationis requested (e.g., by preparing/signing an action),or was so involved in the examination of the parentof the patent. This would preclude assignment of therequest to an examiner who was a conferee in anappeal conference or panel review conference in anearlier concluded examination of the patent (e.g.,the application for patent, a reissue, or a prior

concluded reexamination proceeding). The confereeis considered to have participated in preparing theOffice action which is preceded by the conference.

Exceptions to this general policy include caseswhere the original examiner is the only examinerwith adequate knowledge of the relevant technologyto examine the case. In the unusual case where thereis a need to assign the request to the originalexaminer, the assignment must be approved by theCRU Director, and the fact that such approval wasgiven by the CRU Director must be stated (by theexaminer) in the decision on the request forreexamination.

It should be noted that while an examiner whoexamined an earlier concluded reexaminationproceeding is generally excluded from assignmentof a newly filed reexamination, if the earlierreexamination is still ongoing , the same examinergenerally will be assigned the new reexamination.

Copending reissue and reexamination proceeding:

(1) When a reissue application is pending for apatent, and a reexamination request is filed for thesame patent, the reexamination request is generallyassigned to an examiner who did not examine theoriginal patent application. If the reexaminationrequest is granted and the reissue and reexaminationproceedings are merged (see MPEP § 2686.03), themerged proceeding will be handled by an examinerother than the examiner who examined the originalpatent application. In that instance, if the examinerwho examined the patent application is handling thereissue application, the reissue application would betransferred (reassigned) from that examiner.

(2) When a reexamination proceeding is pendingfor a patent, and a reissue application is filed for thesame patent:

(a) Where reexamination has already beenordered (granted) in the reexamination proceeding,the Office of Patent Legal Administration (OPLA)should be notified, as promptly as possible, that theproceedings are ready for consideration of merger.If any of the reexamination file, the reissueapplication, and the patent file are paper files, theyshould be hand delivered to OPLA at the time of thenotification to OPLA (see MPEP § 2686.03). If thereissue and reexamination proceedings are merged,

Rev. 10.2019, June 20202600-27


the reissue will generally be assigned to the examinerwho would ordinarily handle the reissue application.However, if that examiner was involved in any partof the examination of the patent for whichreexamination is requested (e.g., by preparing orsigning an action), or was so involved in theexamination of the parent application of the patent,a different examiner will be assigned. If the reissueand reexamination proceedings are not merged byOPLA, the decision will provide guidance as toassignment of the reissue proceeding as necessary.

(b) If reexamination has not yet been ordered(granted) in the reexamination proceeding, a SPRSwill ensure that the reissue application is notassigned nor acted on, and the decision on thereexamination request will be made. If reexaminationis denied, the reexamination proceeding will beconcluded pursuant to MPEP § 2694, and the reissueapplication assigned in accordance with MPEP§ 1440. If reexamination is granted, a first Officeaction will not accompany the order grantingreexamination. The signed order should be (afterreview by the CRU SPRS) promptly forwarded formailing. At the same time, OPLA should be notifiedthat the proceedings are ready for consideration ofmerger. If any of the reexamination file, the reissueapplication, and the patent file are paper files, theyshould be hand delivered to OPLA at the time of thenotification to OPLA (see MPEP § 2686.03). If thereissue and reexamination proceedings are mergedby OPLA, the reissue application will generally beassigned to the examiner who ordinarily handles thereissue application. However, if that examiner wasinvolved in any part of the examination of the patentfor which reexamination is requested (e.g., bypreparing/signing the action), or was so involved inexamination of the parent application of the patent,a different examiner will be assigned. If the reissueand reexamination proceedings are not merged byOPLA, the decision will provide guidance as toassignment of the reissue proceeding as necessary.

B. Consequences of Inadvertent Assignment to an“Original Examiner”

Should a reexamination be inadvertently assignedto an “original examiner” (in a situation where theTC or CRU Director’s approval is not stated in thedecision on the request), the patent owner or the thirdparty requester who objects must promptly file a

paper alerting (notifying) the Office of this fact. Anypaper alerting (notifying) the Office to theassignment to an “original examiner” must be filedwithin two months of the first Office action or otherOffice communication indicating the examinerassignment, or reassignment will not be considered.Reassignment of the reexamination to a differentexaminer will be addressed on a case-by-case basis.In no event will the assignment to the originalexaminer, by itself, be grounds for vacating anyOffice decision(s) or action(s) and “restarting” thereexamination.

A situation may arise where a party timely (i.e.,within the two months noted above) files a paperalerting (notifying) the Office to the assignment ofa reexamination to the “original examiner,” but thatpaper does not have a right of entry under the rules(e.g., where an order granting reexamination wasissued by the “original examiner” but a first actionon the merits did not accompany the order, the patentowner timely files a paper alerting the Office of thefact that the “original examiner” has been assignedthe reexamination proceeding. Pursuant to 37 CFR1.939(b), that paper does not have a right of entrysince a first Office action on the merits has not yetbeen issued.) In such situations, the Office maywaive the rules to the extent that the paper directedto the examiner assignment will be entered andconsidered.

2637 [Reserved]

2638 Time Reporting [R-11.2013]

It is essential that all time expended onreexamination activities be reported accurately. Thus,all USPTO personnel should report all time spenton reexamination on their individual Time andAttendance Reports. Even activities such assupervision, copying, typing, and docketing shouldbe included.

2600-28Rev. 10.2019, June 2020


2639 [Reserved]

2640 Decision on Request [R-07.2015]

35 U.S.C. 312 Determination of issue by Director

[Editor Note: As in effect for a request filed prior to September16, 2011.]

(a) REEXAMINATION.— Not later than 3 months afterthe filing of a request for inter partes reexamination undersection 311, the Director shall determine whether a substantialnew question of patentability affecting any claim of the patentconcerned is raised by the request, with or without considerationof other patents or printed publications. The existence of asubstantial new question of patentability is not precluded by thefact that a patent or printed publication was previously cited byor to the Office or considered by the Office.

(b) RECORD.— A record of the Director’s determinationunder subsection (a) shall be placed in the official file of thepatent, and a copy shall be promptly given or mailed to theowner of record of the patent and to the third-party requester.

(c) FINAL DECISION.— A determination by the Directorunder subsection (a) shall be final and non-appealable. Upon adetermination that no substantial new question of patentabilityhas been raised, the Director may refund a portion of the interpartes reexamination fee required under section 311.

35 U.S.C. 312 Determination of issue by Director.

[Editor Note: As in effect for a request filed beginningSeptember 16, 2011 and ending September 15, 2012.]

(a) REEXAMINATION.— Not later than 3 months afterthe filing of a request for inter partes reexamination undersection 311, the Director shall determine whether the informationpresented in the request shows that there is a reasonablelikelihood that the requester would prevail with respect to atleast 1 of the claims challenged in the request, with or withoutconsideration of other patents or printed publications. A showingthat there is a reasonable likelihood that the requester wouldprevail with respect to at least 1 of the claims challenged in therequest is not precluded by the fact that a patent or printedpublication was previously cited by or to the Office orconsidered by the Office.

(b) RECORD.— A record of the Director’s determinationunder subsection (a) shall be placed in the official file of thepatent, and a copy shall be promptly given or mailed to theowner of record of the patent and to the third-party requester.

(c) FINAL DECISION.— A determination by the Directorunder subsection (a) shall be final and non-appealable. Upon adetermination that the showing required by subsection (a) hasnot been made, the Director may refund a portion of the interpartes reexamination fee required under section 311.

37 CFR 1.923 Examiner’s determination on the request forinter partes reexamination.

[Editor Note: For a request filed prior to September 16, 2011.]

Within three months following the filing date of a request forinter partes reexamination under § 1.915, the examiner willconsider the request and determine whether or not a substantialnew question of patentability affecting any claim of the patentis raised by the request and the prior art citation. The examiner’sdetermination will be based on the claims in effect at the timeof the determination, will become a part of the official file ofthe patent, and will be mailed to the patent owner at the addressas provided for in § 1.33(c) and to the third party requester. Ifthe examiner determines that no substantial new question ofpatentability is present, the examiner shall refuse the requestand shall not order inter partes reexamination.

37 CFR 1.923 Examiner’s determination on the request forinter partes reexamination.

[Editor Note: For a request filed beginning September 16, 2011and ending September 15, 2012.]

Within three months following the filing date of a request forinter partes reexamination under § 1.915, the examiner willconsider the request and determine whether or not the requestand the prior art establish a reasonable likelihood that therequester will prevail with respect to at least one of the claimschallenged in the request. The examiner’s determination willbe based on the claims in effect at the time of the determination,will become a part of the official file of the patent, and will bemailed to the patent owner at the address as provided for in §1.33(c) and to the third party requester. If the examinerdetermines that the request has not established a reasonablelikelihood that the requester will prevail with respect to at leastone of the challenged claims, the examiner shall refuse therequest and shall not order inter partes reexamination.

37 CFR 1.925 Partial refund if request for inter partesreexamination is not ordered.

Where inter partes reexamination is not ordered, a refund of aportion of the fee for requesting inter partes reexamination willbe made to the requester in accordance with § 1.26(c).

37 CFR 1.927 Petition to review refusal to order inter partesreexamination.


The third party requester may seek review by a petition to theDirector under § 1.181 within one month of the mailing date ofthe examiner’s determination refusing to order inter partes reexamination. Any such petition must comply with § 1.181(b).If no petition is timely filed or if the decision on petition affirmsthat no substantial new question of patentability has been raised,the determination shall be final and nonappealable.



Rev. 10.2019, June 20202600-29


The third party requester may seek review by a petition to theDirector under § 1.181 within one month of the mailing date ofthe examiner’s determination refusing to order inter partes reexamination. Any such petition must comply with§ 1.181(b).If no petition is timely filed or if the decision on petition affirmsthat a reasonable likelihood that the requester will prevail withrespect to at least one of the claims challenged in the requesthas not been established, the determination shall be final andnonappealable.

Prior to making a determination on the request forreexamination, a litigation search from the TechnicalSupport Staff (TSS) of the Central ReexaminationUnit (CRU) or the Scientific and TechnicalInformation Center (STIC) must be done to checkif the patent has been, or is, involved in litigation.A copy of the litigation search is scanned into theIFW reexamination file history. The “LitigationReview” box on the reexamination IFW file jacketform (RXFILJKT) is completed to indicate that thereview was conducted and the results thereof, andthe reexamination file jacket form is then scannedinto the IFW reexamination file history. In the rareinstance where the record of the reexaminationproceeding or the litigation search indicates thatadditional information is desirable, guidance as tomaking an additional litigation search may beobtained from the library of the Office of theSolicitor. If the patent is or was involved in litigation,and a paper referring to the court proceeding hasbeen filed, reference to the paper by number shouldbe made in the “Litigation Review” box of the IFWfile jacket form as, for example, “litigation; see paperfiled 7-14-2005.” If a litigation records search isalready noted on the file, the examiner need notrepeat or update it.

If litigation has concluded or is taking place in thepatent on which a request for reexamination has beenfiled, the request must be promptly brought to theattention of the examiner’s CRU SPRS who shouldreview the decision on the request and anyexaminer’s action to ensure conformance to thecurrent Office litigation policy and guidelines. SeeMPEP § 2686.04.

35 U.S.C. 312 requires that the Director of the Officedetermine whether or not a “substantial new questionof patentability” affecting any claim of the patent ofwhich reexamination is desired is raised in therequest (for inter partes reexamination requests filedprior to September 16, 2011) or there is a

“reasonable likelihood that the requester will prevail”with respect to at least one of the claims challengedin the request (for inter partes reexaminationrequests filed on or after September 16, 2011) - notlater than three months after the filing date of arequest. See also MPEP § 2641. Such adetermination may be made with or withoutconsideration of other patents or printed publicationsin addition to those cited in the request. No inputfrom the patent owner is considered prior to thedetermination. See Patlex v. Mossinghoff, 771 F.2d480, 226 USPQ 985 (Fed. Cir. 1985).

The patent claims in effect at the time of thedetermination will be the basis for deciding whetherreexamination is to be ordered (37 CFR 1.923). SeeMPEP § 2643. Amendments which (A) have beenfiled in a copending reexamination proceeding inwhich the reexamination certificate has not beenissued, or (B) have been submitted in a reissueapplication on which no reissue patent has beenissued, will not be considered or commented uponwhen deciding a request for reexamination.

The decision on the request for reexamination hasas its main object either the granting or denial of therequest for reexamination. This decision is based onwhether or not “a substantial new question ofpatentability” or a “reasonable likelihood that therequester will prevail” is found. A determination asto ultimate patentability/unpatentability of the claimsis not made in the decision on the request; rather, itis made later, during the examination stage of thereexamination proceeding if reexamination isordered. Accordingly, no prima facie case ofunpatentability need be found to grant an order forreexamination. If a decision to deny an order forreexamination is made, the requester may seekreview by a petition under 37 CFR 1.181. See 37CFR 1.927. It should be noted that a decision to denythe request for reexamination is equivalent to a finalholding (subject only to a petition pursuant to 37CFR 1.927 for review of the denial), that the requestfailed to raise “a substantial new question ofpatentability” or provide a “reasonable likelihoodthat the requester will prevail” based on the cited art(patents and printed publications). See 35 U.S.C.312(c).

2600-30Rev. 10.2019, June 2020


Where there have been prior decisions relating tothe patent, see MPEP § 2642.

It is only necessary to establish that a substantialnew question of patentability or reasonablelikelihood that requester will prevail exists as to oneof the patent claims in order to grant reexamination.The Office’s determination in both the order forreexamination and the examination stage of thereexamination will generally be limited solely to areview of the claim(s) for which reexamination wasrequested. If the requester was interested in havingall of the claims reexamined, requester had theopportunity to include them in its request forreexamination. However, if the requester chose notto do so, those claim(s) for which reexamination wasnot requested will generally not be reexamined bythe Office. It is further noted that 35 U.S.C.311(b)(2) requires that a requester “set forth thepertinency and manner of applying cited prior art toevery claim for which reexamination is requested.”If the requester fails to apply the art to certain claims,then the requester is not statutorily entitled toreexamination of such claims. If a request fails toset forth the pertinency and manner of applying thecited art to any claim for which reexamination isrequested as required by 37 CFR 1.915(b), that claimwill generally not be reexamined. The decision toreexamine any claim for which reexamination hasnot been requested lies within the sole discretion ofthe Office, to be exercised based on the individualfacts and situation of each individual case. If theOffice chooses to reexamine any claim for whichreexamination has not been requested, it is permittedto do so. In addition, the Office may always initiatea reexamination on its own initiative of thenon-requested claim (35 U.S.C. 303(a)). See SonyComputer Entertainment America Inc. v. Dudas, 85USPQ2d 1594 (E.D. Va 2006). If a request fails toset forth the pertinency and manner of applying thecited art to any claim for which reexamination isrequested as required by 37 CFR 1.915, a filing datewill not be awarded to the request. See MPEP § 2617and § 2627.

One instance where reexamination was carried outonly for the claims requested occurred inreexamination control numbers 95/000,093 and95/000,094, where reexamination was requested forpatent claims which were being litigated, but not for

claims which were not being litigated. In thatinstance, the entirety of the reexamination waslimited to the claims for which reexamination wasrequested, and which were being litigated. TheOffice’s authority to carry out reexamination onlyfor the claims for which reexamination was requestedin reexamination control numbers 95/000,093 and95/000,094 was confirmed by the court in Sony, supra. See MPEP § 2642 for the situationwhere there was a prior final federal court decisionas to the invalidity/unenforceability of some of theclaims, as another example of non-examination ofsome of the patent claims in a reexaminationproceeding.

The decision on the request for reexamination shoulddiscuss all of the patent claims requested forreexamination. The examiner should limit thediscussion of those claims in the order forreexamination as to whether a substantial newquestion of patentability has been raised or there isa reasonable likelihood that the requester willprevail. The examiner SHOULD NOT reject claimsin the order for reexamination. Rather, any rejectionof the claims will be made in the first Office actionthat normally will accompany the order forreexamination. See MPEP § 2660.

The Director of the Office has the authority to orderreexamination only for a request which (prior toSeptember 16, 2011) raises a substantial newquestion of patentability or request (on or afterSeptember 16, 2011) provides a “reasonablelikelihood that the requester will prevail”. Thisprotects patentees from having to respond to, orparticipate in, unjustified reexaminations. See Patlexv. Mossinghoff, 771 F.2d 480, 226 USPQ 985, 989(Fed. Cir. 1985).

I. REQUEST FOR REEXAMINATION OF THEPATENT AFTER REISSUE OF THE PATENT

Where a request for reexamination is filed on apatent after a reissue patent for that patent hasalready issued, reexamination will be denied,because the patent on which the request forreexamination is based has been surrendered. Shouldreexamination of the reissued patent be desired, anew request for reexamination, including and basedon the specification and claims of the reissue patent,

Rev. 10.2019, June 20202600-31


must be filed. Where the reissue patent issues afterthe filing of a request for reexamination, see MPEP§ 2686.03.

II. SECOND OR SUBSEQUENT REQUEST FILEDDURING REEXAMINATION

MPEP § 2686.01 provides for a comprehensivediscussion of the situation where a firstreexamination is pending at the time a second orsubsequent request for reexamination is to bedecided, and one of the two is an inter partesreexamination. The present subsection merelyprovides guidance on the standard for the substantialnew question of patentability to be applied in thedecision on the second or subsequent request.

Where an ordered inter partes reexamination ispending, and an inter partes reexamination requestis subsequently filed, the prohibition provision of37 CFR 1.907(a) must be considered. Once an orderfor inter partes reexamination has been issued,neither the third party requester of the inter partes reexamination, nor its privies, may file a subsequentrequest for inter partes reexamination of the samepatent until an inter partes reexamination certificatehas been issued, unless expressly authorized by theDirector of the Office. Note that 37 CFR 1.907(a)tracks the statutory provision of 35 U.S.C. 317(a).A petition for such express authorization is a requestfor extraordinary relief and will not be granted wherethere is a more conventional avenue to accomplishthe same purpose and provide relief analogous tothat requested. See also Cantello v. Rasmussen, 220USPQ 664 (Comm’r Pat. 1982) for the principle thatextraordinary relief will not normally be consideredif the rules provide an avenue for obtaining the reliefsought.

For additional treatment of cases in which either thefirst or subsequent request for examination, or both,is/are an inter partes reexamination proceeding, seeMPEP §§ 2640 and 2686.01.

For additional treatment of cases in which a first exparte reexamination is pending at the time a secondor subsequent request for ex parte reexamination isto be decided, see MPEP § 2283.

For inter partes reexamination requests filed priorto September 16, 2011:

If a second or subsequent request for reexaminationis filed (by any party permitted to do so) while a firstreexamination is pending, the presence of asubstantial new question of patentability depends onthe art (patents and printed publications) cited bythe second or subsequent request. The cited art willbe reviewed for a substantial new question ofpatentability based on the following guidelines:

If one of the two reexaminations is an inter partesreexamination, the following possibilities exist:

(1) An ordered inter partes reexamination ispending, and an ex parte reexamination request issubsequently filed.

(2) An ordered inter partes reexamination ispending, and an inter partes reexamination requestis subsequently filed.

(3) An ordered ex parte reexamination ispending, and an inter partes reexamination requestis subsequently filed.

In all three instances, if the subsequent requestincludes the art which raised a substantial newquestion in the earlier pending reexamination, thenreexamination should be ordered only if the art citedraises a substantial new question of patentabilitywhich is different from that raised in the earlierpending reexamination. If the art cited in thesubsequent request raises the same substantial newquestion of patentability as that raised in the earlierpending reexamination it is not "new," and therefore,the subsequent request should be denied. Where therequest raises a different substantial new questionof patentability as to some patent claims, but not asto others, the request would be granted in part; seethe orders issued in reexamination control number90/007,843 and 90/007,844. If the subsequent requestdoes not include the art which raised the substantialnew question of patentability in the earlier pendingreexamination, reexamination may or may not beordered, depending on whether the different art citedraises a substantial new question of patentability.

The second or subsequent request for reexaminationmay provide information raising a substantial newquestion of patentability with respect to any new or

2600-32Rev. 10.2019, June 2020


amended claim which has been proposed in the first(or prior) pending reexamination proceeding.However, in order for the second or subsequentrequest for reexamination to be granted, the secondor subsequent requester must independently providea substantial new question of patentability which isdifferent from that raised in the pendingreexamination for the claims in effect at the timeof the determination. The decision on the secondor subsequent request is thus based on the claims ineffect at the time of the determination (37 CFR1.923). Thus, the second or subsequent request mustbe directed to the claims of the patent, as modifiedby any disclaimer, or by any reexaminationcertificate that has issued as of the time of thedetermination. If a “different” substantial newquestion of patentability is not provided by thesecond or subsequent request for the claims in effectat the time of the determination, the second orsubsequent request for reexamination must be deniedsince the Office is only authorized by statute to granta reexamination proceeding based on a substantialnew question of patentability “affecting any claimof the patent.” See 35 U.S.C. 312(a). Accordingly,there must be at least one substantial new questionof patentability established for the existing claimsin the patent in order to grant reexamination.

Once the second or subsequent request has provideda “different” substantial new question of patentabilitybased on the claims in effect at the time of thedetermination, the second or subsequent request forreexamination may also provide information directedto any proposed new or amended claim in thepending reexamination, to permit examination ofthe entire patent package. The information directedto a proposed new or amended claim in the pendingreexamination is addressed during the later filedreexamination (where a substantial new question ofpatentability is raised in the later filed request forreexamination for the existing claims in the patent),in order to permit examination of the entire patentpackage. When a proper basis for the second orsubsequent request for reexamination is established,it would be a waste of resources to preventaddressing the proposed new or amended claims, byrequiring parties to wait until the certificate issuesfor the proposed new or amended claims, and onlythen to file a new reexamination request challengingthe claims as revised via the certificate. This also

prevents a patent owner from simply amending allthe claims in some nominal fashion to preclude asubsequent reexamination request during thependency of the reexamination proceeding.

2641 Time for Deciding Request [R-07.2015]



2642 Criteria for Deciding Request[R-07.2015]

I. SUBSTANTIAL NEW QUESTION OFPATENTABILITY/REASONABLE LIKELIHOODTHAT REQUESTER WILL PREVAIL

A. For reexaminations filed prior to September 16,2011:

The presence or absence of “a substantial newquestion of patentability” determines whether or notreexamination is ordered. The meaning and scopeof the term “a substantial new question ofpatentability” is not defined in the statute and mustbe developed to some extent on a case-by-case basis,using the legislative history and case law to provideguidance as will be discussed in this section.

If the prior art patents and printed publications raisea substantial question of patentability of at least oneclaim of the patent, then a substantial new questionof patentability as to the claim is present, unless thesame question of patentability has already been: (A)decided in a final holding of invalidity by a federalcourt in a decision on the merits involving the claim,after all appeals; (B) decided in an earlier concludedexamination or review of the patent by the Office;or (C) raised to or by the Office in a pendingreexamination or supplemental examination of thepatent.

An “earlier concluded examination or review” ofthe patent is: (A) the original examination of theapplication which matured into the patent; (B) theexamination of the patent in a reissue applicationthat has resulted in a reissue of the patent; (C) the

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examination of the patent in an earlier concludedreexamination or supplemental examination; (D) thereview of the patent in an earlier concluded trial bythe Patent Trial and Appeal Board, such as apost-grant review, inter partes review, or coveredbusiness method review of the patent; or (E) anyother contested proceeding which has beenconcluded and which involved the patent.

The answer to the question of whether a “substantialnew question of patentability” exists, and thereforewhether reexamination may be had, is decided bythe examiner, and if reexamination is denied,requester may obtain reconsideration only pursuantto MPEP § 2648. If reexamination is granted, thedecision that a reference raises a SNQ is final andnon-appealable by the patent owner. See 35 U.S.C.312(c).

A prior art patent or printed publication raises asubstantial question of patentability where there isa substantial likelihood that a reasonable examinerwould consider the prior art patent or printedpublication important in deciding whether or notthe claim is patentable. If the prior art patents and/orpublications would be considered important, thenthe examiner should find “a substantial new questionof patentability” unless the same question ofpatentability has already been decided as to the claimin a final holding of invalidity by a federal court orby the Office in an earlier concluded examinationor review or was raised to or by the Office in apending reexamination or supplemental examinationof the patent. For example, the same question ofpatentability may have already been decided by theOffice where the examiner finds the additional(newly provided) prior art patents or printedpublications to be merely cumulative to similar priorart already fully considered by the Office in anearlier concluded examination or review of the claimor a pending reexamination or supplementalexamination of the claim.

Accordingly, for “a substantial new question ofpatentability” to be present, it is only necessary that:

(A) The prior art patents and/or printedpublications raise a substantial question ofpatentability regarding at least one claim, i.e., theteaching of the prior art patents and printedpublications is such that a reasonable examiner

would consider the teaching to be important indeciding whether or not the claim is patentable; and

(B) The same question of patentability as to theclaim has not been decided by the Office in an earlierconcluded examination or review of the patent,raised to or by the Office in a pending reexaminationor supplemental examination of the patent or decidedin a final holding of invalidity (after all appeals) bya federal court in a decision on the merits involvingthe claim. If a reexamination proceeding wasterminated/vacated without resolving the substantialquestion of patentability question, it can bere-presented in a new reexamination request.

It is not necessary that a “prima facie” case ofunpatentability exist as to the claim in order for “asubstantial new question of patentability” to bepresent as to the claim. Thus, “a substantial newquestion of patentability” as to a patent claim couldbe present even if the examiner would notnecessarily reject the claim as either anticipated by,or obvious in view of, the prior art patents or printedpublications. The difference between “a substantialnew question of patentability” and a “prima facie”case of unpatentability is important. See generally In re Etter, 756 F.2d 852, 857 n.5, 225 USPQ 1, 4n.5 (Fed. Cir. 1985).

Note that the clarification of the legal standard fordetermining obviousness under 35 U.S.C. 103 in KSR International Co. v. Teleflex Inc. (KSR), 550U.S. 398, 82 USPQ2d 1385 (2007) does not alterthe legal standard for determining whether asubstantial new question of patentability exists. Seethe discussion in MPEP § 2616. It should be alsonoted that the “substantial new question ofpatentability” standard for granting reexaminationon a request for an inter partes reexamination is thesame as the “substantial new question ofpatentability” standard for granting reexaminationon a request for an ex parte reexamination.

B. For reexaminations filed on or after September 16,2011, and prior to September 16, 2012:

Whether or not the request and the prior art establisha reasonable likelihood that the requester will prevailwith respect to at least one of the claims challengedin the request determines whether or notreexamination is ordered. The meaning and scope

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of the term “a reasonable likelihood that therequester will prevail” is not defined in the statuteand must be developed to some extent on acase-by-case basis. With respect to the reasonablelikelihood standard, House Rep. 112-98 (Part 1),112th Cong., 1st Sess., provides, in connection with inter partes review, the following:

“The threshold for initiating an inter partes reviewis elevated from ‘significant new question ofpatentability’--a standard that currently allows 95%of all requests to be granted--to a standard requiringpetitioners to present information showing that theirchallenge has a reasonable likelihood of success.”H.R. Rep. No. 112-98 (Part 1), at 47.

Thus, the reasonable likelihood standard requires ashowing that is “elevated” from that of thesubstantial question of patentability questionstandard.

If a reexamination proceeding wasterminated/vacated without resolving the “reasonablelikelihood” question, it can be re-presented in a newreexamination request (but note that for an ex partereexamination request, a substantial new questionof patentability must be raised).

II. POLICY AS TO SUBSTANTIAL NEWQUESTION OF PATENTABILITY IN SPECIFICSITUATIONS

In order to further clarify the meaning of “asubstantial new question of patentability,” certainsituations are outlined below which, if present,should be considered when making a decision as towhether or not “a substantial new question ofpatentability” is present.

A. Prior Favorable Decisions by the U.S. Patent andTrademark Office on the Same or Substantially IdenticalPrior Art in Relation to the Same Patent

A “substantial new question of patentability” is notraised by the prior art if the Office has previouslyconsidered (in an earlier concluded examination orreview of the patent or in a pending reexaminationor supplemental examination of the patent) the samequestion of patentability as to a patent claimfavorable to the patent owner based on the same

prior art patents or printed publications. In reRecreative Technologies, 83 F.3d 1394, 38 USPQ2d1776 (Fed. Cir. 1996).

In deciding whether to grant a request forreexamination of a patent, the examiner should checkthe patent’s file history to ascertain whether any ofthe prior art now advanced by requester waspreviously cited/considered in an earlier concludedexamination or review of the patent or in a pendingreexamination or supplemental examination of thepatent. For the sake of expediency, such art isreferred to as “old art” throughout, since the term“old art” was coined by the Federal Circuit in itsdecision of In re Hiniker Co., 150 F.3d 1362,1365-66, 47 USPQ2d 1523, 1526 (Fed. Cir. 1998).

In a decision to order reexamination made on or afterNovember 2, 2002, reliance on old art does notnecessarily preclude the existence of a substantialnew question of patentability that is basedexclusively on that old art. See Public Law 107-273,116 Stat. 1758, 1899-1906 (2002), which expandedthe scope of what qualifies for a substantial newquestion of patentability upon which a reexaminationmay be based. Determinations on whether asubstantial new question of patentability exists insuch an instance shall be based upon a fact-specificinquiry done on a case-by-case basis. For example,a substantial new question of patentability may bebased solely on old art where the old art is beingpresented/viewed in a new light, or in a differentway, as compared with its use in the earlierexamination(s), in view of a material new argumentor interpretation presented in the request.

When it is determined that a substantial new questionof patentability based solely on old art is raised, formparagraph 22.01.01 should be included in the orderfor reexamination.

¶ 22.01.01 Criteria for Applying Old Art as Sole Basis forReexamination

The above [1] is based solely on patents and/or printedpublications already cited/considered in an earlier concludedexamination or review of the patent being reexamined, or hasbeen raised to or by the Office in a pending reexamination orsupplemental examination of the patent. On November 2, 2002,Public Law 107-273 was enacted. Title III, Subtitle A, Section13105, part (a) of the Act revised the reexamination statute byadding the following new last sentence to 35 U.S.C. 303(a) and312(a):

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"The existence of a substantial new question ofpatentability is not precluded by the fact that a patent orprinted publication was previously cited by or to theOffice or considered by the Office."

For any reexamination ordered on or after November 2, 2002,the effective date of the statutory revision, reliance on previouslycited/considered art, i.e., “old art,” does not necessarily precludethe existence of a substantial new question of patentability(SNQ) that is based exclusively on that old art. Rather,determinations on whether a SNQ exists in such an instanceshall be based upon a fact-specific inquiry done on acase-by-case basis.

In the present instance, there exists a SNQ based solely on [2].A discussion of the specifics now follows:

[3]

Examiner Note:

1. In bracket 1, insert “substantial new question ofpatentability” if the present form paragraph is used in an ordergranting reexamination (or a TC or CRU Director’s decision onpetition of the denial of reexamination). If this form paragraphis used in an Office action, insert “ground of rejection.”

2. In bracket 2, insert the old art that is being applied as thesole basis of the SNQ. For example, “the patent to J. Doe” or“the patent to J. Doe when taken with the Jones publication” or“the combination of the patent to J. Doe and the Smithpublication” could be inserted. Where more than one SNQ ispresented based solely on old art, the examiner would insert allsuch bases for SNQ.

3. In bracket 3, for each basis identified in bracket 2, explainhow and why that fact situation applies in the proceeding beingacted on. The explanation could be for example that the old artis being presented/viewed in a new light, or in a different way,as compared with its use in the earlier examination(s), in viewof a material new argument or interpretation presented in therequest. See Ex parte Chicago Rawhide Mfg. Co., 223 USPQ351 (Bd. Pat. App. & Inter. 1984).

4. This form paragraph is only used the first time the “alreadycited/considered” art is applied, and is not repeated for the sameart in subsequent Office actions.

MPEP § 2258.01 provides a discussion of the useof “old art” in the examination stage of an orderedreexamination (as a basis for rejecting patent claims).

B. Prior Adverse Decisions by the Office on the Sameor Substantially Identical Prior Art in the Same Patent

A prior decision adverse to the patentability of aclaim of a patent by the Office based upon prior artpatents or printed publications would usually meanthat “a substantially new question of patentability”is present. Such an adverse decision by the Office

could arise from a reissue application which wasabandoned after rejection of the claim and withoutdisclaiming the patent claim.

C. Prior Adverse Reissue Application Final Decisionby the Director of the Office or the Board Based UponGrounds Other Than Patents or Printed Publications

Any prior adverse final decision by the Director ofthe Office, or the Patent Trial and Appeal Board orBoard of Patent Appeals and Interferences (Board),on an application seeking to reissue the same patenton which reexamination is requested will beconsidered by the examiner when determiningwhether or not a “substantial new question ofpatentability” is present. To the extent that such aprior adverse final decision was based upon groundsother than patents or printed publications, the prioradverse final decision will not be considered indetermining whether or not a “substantial newquestion of patentability” is present.

D. Prior Favorable or Adverse Decisions on the Sameor Substantially Identical Prior Art Patents or PrintedPublications in Other Cases not Involving the Patent

While the Office would consider decisions involvingsubstantially identical patents or printed publicationsin determining whether a “substantial new questionof patentability” is raised, the weight given to suchdecisions will depend upon the circumstances.

III. POLICY WHERE A FEDERAL COURTDECISION HAS BEEN ISSUED ON THE PATENT

As to A - C which follow, see Ethicon v. Quigg,849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988).

A. Final Holding of a Failure to Prove Invalidity bythe Courts

When the initial question as to whether the prior artraises a substantial new question of patentability(SNQ) or there is a reasonable likelihood that therequester will prevail (RLP) as to a patent claim isunder consideration, the existence of a final courtdecision that a patent claim is not invalid in viewof the same or different prior art does not necessarilymean that no SNQ/RLP is present, because of thedifferent standards of proof and different standards

2600-36Rev. 10.2019, June 2020


of claim construction applied by the federal districtcourts and the Office. While the Office may accorddeference to factual findings made by the court, thedetermination of whether a SNQ/RLP exists will bemade independently of the court’s decision onvalidity, because it is not binding on the Office. See,e.g., In re Swanson et al., 540 F.3d 1368, 1378 (Fed.Cir. 2008) (Federal Circuit approved of the Office’sinterpretation in MPEP § 2242). Note, where therequester was a party to the prior litigation resultingin the final court decision that a patent claim is notinvalid, see MPEP § 2686.04, subsection II(B) fora discussion of the application of the estoppelprovisions of the inter partes reexamination statute.

B. Non-final Holding of Invalidity or Unenforceabilityby the Courts

A non-final holding of claim invalidity orunenforceability will not be controlling on thequestion of whether a substantial new question ofpatentability/a reasonable likelihood that therequester will prevail is present.

C. Final Holding of Invalidity or Unenforceability bythe Courts

However, a final holding of claim invalidity orunenforceability, after all appeals, binds the Office.In such cases, a substantial new question ofpatentability/a reasonable likelihood that therequester will prevail would not be present as to anyclaims finally held invalid or unenforceable.

Note: Any situations requiring clarification shouldbe brought to the attention of the Office of PatentLegal Administration.

2643 Claims Considered in Deciding Request[R-07.2015]

The claims of the patent in effect at the time of thedetermination will be the basis for deciding whether“a substantial new question of patentability” or “areasonable likelihood that the requester will prevail”is present. 37 CFR 1.923. The Office’s determinationin both the order for reexamination and theexamination stage of the reexamination willgenerally be limited solely to a review of the claim(s)for which reexamination was requested. If a

requester seeks to have all of the claims in a patentreexamined, the requester has the opportunity toinclude them in its request for reexamination.However, if the requester chooses not to include allclaims, the claim(s) for which reexamination wasnot requested will generally not be reexamined bythe Office. Further, 35 U.S.C. 311(b)(2) requiresthat a requester “set forth the pertinency and mannerof applying cited prior art to every claim for whichreexamination is requested.” If requester fails toapply the art to certain claims, requester is notstatutorily entitled to reexamination of such claims.If a request fails to set forth the pertinency andmanner of applying the cited art to any claim forwhich reexamination is requested as required by 37CFR 1.915(b), that claim will generally not bereexamined. The decision to reexamine any claimfor which reexamination has not been requested lieswithin the sole discretion of the Office, to beexercised based on the individual facts and situationof each individual case. If the Office chooses toreexamine any claim for which reexamination hasnot been requested, it is permitted to do so, since theOffice may always initiate a reexamination on itsown initiative of the non-requested claim (35 U.S.C.303(a)). Thus, while the examiner ordinarilyconcentrates on the claims for which reexaminationis requested, the finding of “a substantial newquestion of patentability” or “a reasonable likelihoodthat the requester will prevail” can be based upon aclaim of the patent other than the ones for whichreexamination is requested. For example, the requestmight seek reexamination of particular claims only(i.e., claims 1-4), but the examiner is not limited tothose claims. The examiner can make adetermination that “a substantial new question ofpatentability” or “a reasonable likelihood that therequester will prevail” is present as to other claimsin the patent (i.e., claims 5-7), without necessarilyfinding “a substantial new question” or “a reasonablelikelihood that the requester will prevail” with regardto the claims requested (i.e., claims 1-4).

The decision on the request for reexamination shoulddiscuss all of the patent claims requested forreexamination. The examiner should limit thediscussion of those claims in the order forreexamination as to whether a substantial newquestion of patentability has been raised or “a

Rev. 10.2019, June 20202600-37


reasonable likelihood that the requester will prevail”is present.

MPEP § 2642 discusses patent claims which havebeen the subject of a prior decision.

Amendments and/or new claims present in anycopending reexamination or reissue proceeding forthe patent to be reexamined will not (see MPEP §2640, subsection II.(A)) be considered norcommented upon when deciding a request forreexamination.

2644 Prior Art on Which the DeterminationIs Based [R-11.2013]

The determination of whether or not “a substantialnew question of patentability” or “a reasonablelikelihood that the requester will prevail” is presentcan be based upon any prior art patents or printedpublications. 35 U.S.C. 312(a) provides that thedetermination on a request will be made “with orwithout consideration of other patents or printedpublications,” i.e., other than those relied upon inthe request. The examiner is not limited in makingthe determination based on the patents and printedpublications relied upon in the request. The examinercan find “a substantial new question of patentability”or “a reasonable likelihood that the requester willprevail” based upon the prior art patents or printedpublications relied upon in the request, acombination of the prior art relied upon in the requestand other prior art found elsewhere, or based entirelyon different patents or printed publications. Theprimary source of patents and printed publicationsused in making the determination are those reliedon in the request. For reexamination ordered on orafter November 2, 2002, see MPEP § 2642,subsection II.A. for a discussion of “old art.” Theexaminer can also consider any patents and printedpublications of record in the patent file fromsubmissions under 37 CFR 1.501 which are incompliance with 37 CFR 1.98 in making thedetermination. If the examiner believes thatadditional prior art patents and publications can bereadily obtained by searching to supply anydeficiencies in the prior art cited in the request, theexaminer can perform such an additional search.Such a search should be limited to that area mostlikely to contain the deficiency of the prior art

previously considered and should be made onlywhere there is a reasonable likelihood that prior artcan be found to supply any deficiency necessary to“a substantial new question of patentability" or "areasonable likelihood that the requester will prevail.”

The determination should be made on the claims ineffect at the time the determination is made. 37 CFR1.923.

2645 [Reserved]

2646 Decision Ordering Reexamination[R-07.2015]

35 U.S.C. 313 Inter partes reexamination order by Director.

[Editor Note: As in effect prior to September 16, 2011.]

If, in a determination made under section 312(a), the Directorfinds that a substantial new question of patentability affectinga claim of a patent is raised, the determination shall include anorder for inter partes reexamination of the patent for resolutionof the question. The order may be accompanied by the initialaction of the Patent and Trademark Office on the merits of theinter partes reexamination conducted in accordance with section314.

35 U.S.C. 313 Inter partes reexamination order by Director.

[Editor Note: As in effect beginning September 16, 2011 andending September 15, 2012.]

If, in a determination made under section 312(a), the Directorfinds that it has been shown that there is a reasonable likelihoodthat the requester would prevail with respect to at least 1 of theclaims challenged in the request, the determination shall includean order for inter partes reexamination of the patent forresolution of the question. The order may be accompanied bythe initial action of the Patent and Trademark Office on themerits of the inter partes reexamination conducted in accordancewith section 314.

37 CFR 1.931 Order for inter partes reexamination.

[Editor Note: As in effect for a request filed prior to September16, 2011.]

(a) If a substantial new question of patentability is found,the determination will include an order for inter partesreexamination of the patent for resolution of the question.

(b) If the order for inter partes reexamination resulted froma petition pursuant to § 1.927, the inter partes reexaminationwill ordinarily be conducted by an examiner other than theexaminer responsible for the initial determination under § 1.923.

37 CFR 1.931 Order for inter partes reexamination.

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[Editor Note: As in effect for a request filed beginningSeptember 16, 2011 and ending September 15, 2012.]

(a) If it is found that there is a reasonable likelihood thatthe requester will prevail with respect to at least one of theclaims challenged in the request, the determination will includean order for inter partes reexamination of the patent forresolution of the question of whether the requester will prevail.

(b) If the order for inter partes reexamination resulted froma petition pursuant to § 1.927, the inter partes reexaminationwill ordinarily be conducted by an examiner other than theexaminer responsible for the initial determination under § 1.923.

If a request for reexamination is granted, theexaminer’s decision granting the request willconclude by stating:

-For a request filed prior to September 16, 2011 -that a substantial new question of patentability(SNQ) has been raised affecting a claim of a patent.

-For a request filed beginning September 16, 2011and ending September 15, 2012 - that there is areasonable likelihood that the requester will prevail(RLP) with respect to at least one of the claimschallenged in the request.

These conclusions (depending on whenreexamination was filed) will be referred tocollectively as a conclusion that “there is aSNQ/RLP”.

The decision will (A) identify all claims and issues,(B) identify the patents and/or printed publicationsrelied upon, and (C) provide a brief statement of therationale supporting each SNQ/RLP.

In the examiner’s decision, the examiner mustidentify at least one SNQ/RLP and explain how theprior art patents and/or printed publications establishthat SNQ/RLP. In a simple case, this may entailadoption of the reasons provided by the third partyrequester. The references relied on by the examinershould be cited on a PTO-892 form, unless alreadylisted on a form PTO/SB/08A or 08B, or PTO/SB/42(or on a form having a format equivalent to one ofthese forms) submitted by the third party requester.A copy of the reference should be supplied onlywhere it has not been previously supplied to thepatent owner and third party requester.

Where it is not clear that a patent or printedpublication pre-dates the patent claims, a discussionshould be provided as to why the patent or printedpublication is deemed to be available against thepatent claims.

If arguments are raised by the third party requesteras to grounds not based on patents or printedpublications, such as those based on public use oron sale under 35 U.S.C. 102(b), or abandonmentunder 35 U.S.C. 102(c), the examiner should notethat such grounds are improper for reexaminationand are not considered or commented upon. See 37CFR 1.906(c).

In the decision on the request, the examiner does notdecide the ultimate question of patentability of theclaims. Rather, the examiner only decides whetherthere is a SNQ/RLP established sufficient to grantthe request and order reexamination.

The decision granting the request is made using formPTOL-2063 as a cover sheet. See MPEP § 2647.01for an example of a decision granting a request for inter partes reexamination.

Form Paragraph 26.01 is used at the beginning ofeach decision letter granting reexamination.

For a request filed prior to September 16, 2011, thefollowing version was to be used:

Former ¶ 26.01 New Question of Patentability

A substantial new question of patentability affectingclaim [1] of United States Patent Number [2] israised by the present request for inter partesreexamination.

Extensions of time under 37 CFR 1.136(a) will notbe permitted in inter partes reexaminationproceedings because the provisions of 37 CFR 1.136apply only to “an applicant” and not to the patentowner in a reexamination proceeding. Additionally,35 U.S.C. 314(c) requires that inter partes reexamination proceedings “will be conducted withspecial dispatch” (37 CFR 1.937). Patent ownerextensions of time in inter partes reexaminationproceedings are provided for in 37 CFR 1.956.Extensions of time are not available for third party

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requester comments, because a comment period of30 days from service of patent owner’s response isset by statute. 35 U.S.C. 314(b)(2).

For a request filed beginning September 16, 2011and ending September 15, 2012, the followingversion is used:

¶ 26.01 Reasonable likelihood established

The present request for inter partes reexamination establishesa reasonable likelihood that requester will prevail with respectto claim [1] of United States Patent Number [2].

Extensions of time under 37 CFR 1.136(a) will not be permittedin inter partes reexamination proceedings because theprovisions of 37 CFR 1.136 apply only to “an applicant” andnot to the patent owner in a reexamination proceeding.Additionally, 35 U.S.C. 314(c) requires that inter partes reexamination proceedings “will be conducted with specialdispatch” (37 CFR 1.937). Patent owner extensions of time ininter partes reexamination proceedings are provided for in 37CFR 1.956. Extensions of time are not available for third partyrequester comments, because a comment period of 30 days fromservice of patent owner’s response is set by statute. 35 U.S.C.314(b)(2).

Form paragraph 26.73 is used at the end of eachdecision letter granting reexamination that is notbeing mailed concurrently with the first Office actionon patentability (see MPEP § 2660).

¶ 26.73 Correspondence and Inquiry as to Office Actions

All correspondence relating to this inter partes reexaminationproceeding should be directed:

By EFS: Registered users may submit via the electronic filingsystem EFS-Web, at https://efs.uspto.gov/efile/myportal/efs-registered.

By Mail to: Mail Stop Inter Partes Reexam

Attn: Central Reexamination Unit

Commissioner for Patents

United States Patent & Trademark Office

P.O. Box 1450

Alexandria, VA 22313-1450

By FAX to: (571) 273-9900

Central Reexamination Unit

By hand: Customer Service Window

Randolph Building

401 Dulany Street

Alexandria, VA 22314

For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i)(C) and (ii)states that correspondence (except for a request forreexamination and a corrected or replacement request forreexamination) will be considered timely filed if (a) it istransmitted via the Office's electronic filing system in accordancewith 37 CFR 1.6(a)(4), and (b) includes a certificate oftransmission for each piece of correspondence stating the dateof transmission, which is prior to the expiration of the set periodof time in the Office action.

Any inquiry concerning this communication or earliercommunications from the examiner, or as to the status of thisproceeding, should be directed to the Central ReexaminationUnit at telephone number (571) 272-7705.

Examiner Note:

1. This form paragraph is used at the end of inter partesreexamination communications.

2. The examiner having charge of the proceeding is not to becontacted by the parties to the proceeding.

I. PROCESS OF PREPARING THE DECISION ONTHE REQUEST, AND ANY ACCOMPANYINGOFFICE ACTION

After the reexamination file has been reviewed inthe Central Reexamination Unit (CRU) to ensurethat it is ready for examination, the reexaminationproceeding is assigned to an examiner.

In the event the CRU Supervisory PatentReexamination Specialist (SPRS) believes thatanother Art Unit within the CRU should examinethe reexamination file, see MPEP § 2637 forprocedures for transferring the reexamination file.

After the examiner receives the new inter partesreexamination file, the examiner prepares for andsets up a panel review conference as per MPEP §2671.03, to discuss the issuance of a decision on therequest for reexamination, and, where applicable, afirst Office action to accompany the decision. Theexaminer may prepare the decision on the requestfor reexamination, and, where applicable, the first

2600-40Rev. 10.2019, June 2020


https://efs.uspto.gov/efile/myportal/efs-registered


Office action to accompany the decision after theconference, or may prepare the decision on therequest for reexamination, and, where applicable,the first Office action prior to the conference andrevise it as needed after the conference.

The conference is conducted. If the conferenceconfirms the examiner’s preliminary decision togrant reexamination, the decision on the request forreexamination, and any first Office action toaccompany the decision (also confirmed), iscompleted and signed by the examiner, with the two,or more, other conferees initialing the action (as“conferee”) to indicate their presence in theconference. A transmittal form PTOL-2070 with thethird party requester’s address are completed, if acopy for mailing is not already available. Thetransmittal form PTOL-2070 is used to forwardcopies of Office actions (and any references cited inthe actions) to the third party requester. Wheneveran Office action is issued, a copy of this form ismade and attached to a copy of the Office action.The use of this form removes the need to retype thethird party requester’s address each time a mailingis required. In conjunction with the mailing, anyappropriate processing (e.g., PALM work, updatescanning) is carried out by the staff of the CRU.

II. PETITION TO VACATE THE ORDERGRANTING REEXAMINATION

A substantive determination by the Director of theOffice to institute reexamination pursuant to afinding that the prior art patents or printedpublications raise a substantial new question ofpatentability is not subject to review by petition orotherwise. See Joy Mfg. Co. v. Nat’l Mine Serv. Co.,Inc., 810 F.2d 1127, 1 USPQ2d 1627 (Fed. Cir.1987); Heinl v. Godici, 143 F.Supp. 2d 593 (E.D.Va. 2001); see also Patlex Corp. v. Quigg, 680F.Supp. 33, 6 USPQ2d 1296, 1298 (D.D.C. 1988)(the legislative scheme leaves the Director’s 35U.S.C. 303 determination entirely to his discretionand not subject to judicial review). These decisionswere rendered for ex parte reexamination; however,the holdings of these decisions apply equally for aSNQ finding in inter partes reexaminationproceedings, since the language of 35 U.S.C. 303(c)(i.e., the ex parte reexamination statute) is alsofound in 35 U.S.C. 312(c) (i.e., the inter partes

reexamination statute). In like manner, thesedecisions apply equally for a RLP finding in interpartes reexamination proceedings. Because thesubstantive determination is not subject to reviewby petition or otherwise, neither the patent ownernor the third party requester has a right to petition,or request reconsideration of, a finding that the priorart patents or printed publications raise a SNQ/RLP.There is no right to petition, as an “ ultra vires”action by the Office, if the finding of a SNQ/RLP isbased on reasons other than those urged by the thirdparty requester (or based on less than all the groundsurged by the third party requester). Where theexaminer determines that a date of a reference isearly enough such that the reference constitutes priorart, that determination is not petitionable (withrespect to vacating the examiner’s finding of aSNQ/RLP). Where the examiner determines that areference is a printed publication (i.e., that thecriteria for publication has been satisfied), thatdetermination is also not petitionable. These matterscannot be questioned with respect to vacating theorder granting reexamination.

A petition under 37 CFR 1.181 may, however, befiled to vacate a reexamination order where nodiscretion to grant a request for reexamination exists.“Appropriate circumstances” under 37 CFR1.181(a)(3) exist to vacate the order grantingreexamination where, for example:

(A) the reexamination order is facially not basedon prior art patents or printed publications;

(B) reexamination is prohibited under 37 CFR1.907;

(C) all claims of the patent were held to beinvalid by a final decision of a federal court after allappeals;

(D) reexamination was ordered for the wrongpatent; or

(E) reexamination was ordered based on aduplicate copy of the request.

While a patent owner may file a petition under 37CFR 1.181(a)(3) to vacate a reexamination order as“ ultra vires,” such a petition should be rare, andwill be granted only in a situation where the Officeacted in “brazen defiance” of its statutory authorityin granting the reexamination order. See Heinl, 143

Rev. 10.2019, June 20202600-41


F. Supp. 2d at 601-02. This occurs only where theOffice applied the wrong standard in orderingreexamination; a petition is not to be filed tochallenge the Office’s application of the correctstandard, since such is barred by statute. See 35U.S.C. 312(c). Petitions to vacate a reexaminationorder are delegated to the Director of CentralReexamination Unit (CRU).

When a petition under 37 CFR 1.181 is filed tovacate a reexamination order, the third partyrequester may file a single submission in oppositionto the petition. Because reexamination proceedingsare conducted with special dispatch, 35 U.S.C.314(c), any such opposition by the third partyrequester must be filed within two weeks of the dateupon which a copy of the original 37 CFR 1.181petition was served on the third party requester toensure consideration. It is advisable that, uponreceipt and review of the served copy of such a 37CFR 1.181 petition which the third party requesterintends to oppose, the requester should immediatelyplace a courtesy telephone call to the CRU SPRS tonotify the Office that an opposition to the 37 CFR1.181 petition will be filed. Whenever possible, filingof the opposition should be submitted electronically.

The filing of a 37 CFR 1.181 petition to vacate an ultra vires reexamination order is limited to a singlesubmission, even if an opposition thereto is filed bya third party requester.

III. PRIOR ART SUBMITTED AFTER THE ORDER

Any prior art citations under 37 CFR 1.501 submittedafter the date of the decision ordering inter partes reexamination are stored until the reexamination isconcluded. Note 37 CFR 1.902. After thereexamination proceeding is concluded, thesubmission is entered in the patent file. Submissionsfiled after the date of an order for reexamination willnot be considered by the examiner during thereexamination. See MPEP § 2206. Note that 37 CFR1.902 governs submissions of prior art that can bemade by patent owners and third party requesters after reexamination has been ordered. Also note thatwritten statements under 37 CFR 1.501 are notpermitted to be filed in an inter partesreexamination. See MPEP § 2602.

2647 Decision Denying Reexamination[R-07.2015]

The request for reexamination will be denied if aSNQ/RLP is not found based on patents or printedpublications.

If the examiner concludes that no SNQ/RLP hasbeen raised, the examiner should prepare a decisiondenying the reexamination request. Form paragraph26.02 should be used as the introductory paragraphin a decision denying reexamination.

For a request filed prior to September 16, 2011, thefollowing version was to be used:

Former ¶ 26.02 No New Question of Patentability

No substantial new question of patentability is raisedby the present request for inter partes reexaminationand the prior art cited therein for the reasons set forthbelow.

For a request filed beginning September 16, 2011and ending September 15, 2012, the followingversion is used:

¶ 26.02 No reasonable likelihood established

For the reasons set forth below, the present request for interpartes reexamination fails to establish a reasonable likelihoodthat requester will prevail with respect to at least one of thechallenged claims of United States Patent Number [1].

The decision denying the request will then indicate,for each patent or publication cited in the request,why a SNQ/RLP has not been established by therequest, for that citation.

The examiner should also, in the decision, respondto the substance of each argument raised by the thirdparty requester which is based on patents or printedpublications.

If arguments are presented as to grounds not basedon prior art patents or printed publications, such asthose based on public use or on sale under 35 U.S.C.102(b), or abandonment under 35 U.S.C. 102(c), theexaminer should note that such grounds are improperfor reexamination and are not considered orcommented upon. See 37 CFR 1.906(c).

2600-42Rev. 10.2019, June 2020


See MPEP § 2647.01 for an example of a decisiondenying a request for inter partes reexaminationwhich was filed prior to September 16, 2011 (whenthe SNQ standard was applied).

The decision denying the request is processed formailing by the Central Reexamination Unit (CRU),and the CRU will allow time for petition seekingreview of the examiner’s determination refusingreexamination. If such a petition is not filed withinone (1) month of the examiner’s determinationdenying reexamination, the CRU then processes thereexamination file to provide the partial refund setforth in 37 CFR 1.26(c) (the Office of Finance nolonger processes reexamination proceedings for arefund).

The reexamination proceeding is then given a 420status in the Office's PALM system. A copy of thePALM “Application Number Information” screenand the “Contents” screen is printed, the printed copyis annotated by adding the comment“PROCEEDING CONCLUDED,” and the annotatedcopy is scanned into IFW using the miscellaneousletter document code.

The concluded reexamination file (electronic orpaper) containing the request and the decisiondenying the request becomes part of the patent’srecord.

PROCESS OF PREPARING THE DECISIONDENYING THE REQUEST

If the examiner’s position is to deny reexamination,the examiner prepares for and sets up a panel review

conference as per MPEP § 2671.03, to discuss theissuance of a decision denying reexamination. Theexaminer may prepare the decision after theconference, or may prepare the decision prior to theconference and revise it, as needed.

If the conference confirms the examiner’spreliminary decision not to grant reexamination, thedecision denying reexamination is completed andsigned by the examiner, with the two or more otherconferees initialing the action (as “conferee”) toindicate their presence in the conference. Atransmittal form PTOL-2070 with the third partyrequester’s address is completed, if a copy formailing is not already available. The transmittal formPTOL-2070 is used to forward the decision to thethird party requester. The use of this form removesthe need to retype the third party requester’s addresseach time a mailing is required.

2647.01 Examples of Decisions on Requests[R-11.2013]

Examples of decisions on requests for inter partesreexamination for requests filed prior to September16, 2011 (when the SNQ standard was applied), areprovided below. The first example is a grant of an inter partes reexamination. The second example isa denial of an inter partes reexamination. Theexaminer should leave the paper number blank, sinceIFW files do not have a paper number.

Rev. 10.2019, June 20202600-43


2600-44Rev. 10.2019, June 2020


DECISION GRANTING INTER PARTES REEXAMINATION

A substantial new question of patentability affecting claims 1-3 of United States Patent Number 9,999,999to Key is raised by the present request for inter partes reexamination.Extensions of time under 37 CFR 1.136(a) will not be permitted in inter partes reexamination proceedingsbecause the provisions of 37 CFR 1.136 apply only to “an applicant” and not to parties in a reexaminationproceeding. Additionally, 35 U.S.C. 314(c) requires that inter partes reexamination proceedings “will beconducted with special dispatch” (37 CFR 1.937). Patent owner extensions of time in inter partesreexamination proceedings are provided for in 37 CFR 1.956. Extensions of time are not available for thirdparty requester comments, because a comment period of 30 days from service of patent owner’s responseis set by statute. 35 U.S.C. 314(b)(3).The patent owner is reminded of the continuing responsibility under 37 CFR 1.985(a), to apprise the Officeof any litigation activity, or other prior or concurrent proceeding, involving Patent 9,999,999 throughoutthe course of this reexamination proceeding. The third party requester is also reminded of the ability tosimilarly apprise the Office of any such activity or proceeding throughout the course of this reexaminationproceeding. See MPEP § 2686 and 2686.04.The request sets forth that the third party requester considers claims 1-3 of the Key patent to be unpatentableover Smith taken with Jones.The request further sets forth that the requester considers claim 4 of the Key patent to be unpatentable overthe Horn publication.It is agreed that the consideration of Smith raises a substantial new question of patentability as to claims1-3 of the Key patent. As pointed out on pages 2-3 of the request, Smith teaches using an extruder supportedon springs at a 30 degree angle to the horizontal but does not teach the specific polymer of claims 1-3 whichis extruded. The teaching as to spring-supporting the extruder at 30 degrees was not present in the prosecutionof the application which became the Key patent. Further, there is a substantial likelihood that a reasonableexaminer would consider this teaching important in deciding whether or not the claim is patentable.Accordingly, Smith raises a substantial new question of patentability as to claims 1-3, which question hasnot been raised in a previous examination of the Key patent.The Horn publication does not raise a new question of patentability as to claim 4 because its teaching as tothe extrusion die is a substantial equivalent of the teaching of the die by the Dorn patent which was consideredin the prosecution of the application which became the Key patent. Further, the request does not presentany other new question of patentability as to claim 4, and none has been found. Accordingly, claim 4 willnot be reexamined.Finally, reexamination has not been requested for claims 5 – 20 of the Key patent. Accordingly, claims 5– 20 will not be reexamined.Claims 1 – 3 of the Key patent will be reexamined.All correspondence relating to this inter partes reexamination proceeding should be directed:

Registered users may submit via the electronic filing system EFS-Web, atBy EFS:https://efs.uspto.gov/efile/myportal/efs-registeredMail Stop Inter Partes ReexamBy Mail to:Attn: Central Reexamination UnitCommissioner for PatentsUnited States Patent & Trademark OfficeP.O. Box 1450Alexandria, VA 22313-1450(571) 273-9900By FAX to:Central Reexamination UnitCustomer Service WindowBy hand:Randolph Building

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401 Dulany StreetAlexandria, VA 22314

For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i) (C) and (ii) states that correspondence (except for a requestfor reexamination and a corrected or replacement request for reexamination) will be considered timely filedif (a) it is transmitted via the Office’s electronic filing system in accordance with 37 CFR 1.6(a)(4), and (b)includes a certificate of transmission for each piece of correspondence stating the date of transmission,which is prior to the expiration of the set period of time in the Office action.Any inquiry concerning this communication or earlier communications from the examiner, or as to thestatus of this proceeding, should be directed to the Central Reexamination Unit at telephone number (571)272-7705.

/John Doe/John DoePrimary ExaminerCRU Art Unit 3998/ARI/Conferee/BZ/Conferee

2600-46Rev. 10.2019, June 2020


Rev. 10.2019, June 20202600-47


DECISION DENYING INTER PARTES REEXAMINATIONNo substantial new question of patentability is raised by the present request for inter partes reexaminationfor the reasons set forth belowThe request indicates that Requester considers that a substantial new question of patentability is raised asto claims 1-2 of the Key patent (Patent # 9,999,999) based on Smith taken with Jones.The request further indicates that Requester considers that a substantial new question of patentability israised as to claim 3 of the Key patent based on Smith taken with Jones and when further taken with theHorn publication.The claims of the Key patent, for which reexamination is requested, require that an extruder be supportedon springs at an angle of 30 degrees to the horizontal, while a specific chlorinated polymer is extrudedthrough a specific extrusion die.The Smith patent does not raise a substantial new question of patentability as to the Key claims. Smith’steaching as to the extruder being spring-supported at 30 degrees is a substantial equivalent of the teachingof same by the Dorn patent which was considered in the prosecution of the application which became theKey patent.In the request for reexamination, it is argued that Jones teaches the extrusion die. However, Jones waspreviously used, in the prosecution of the Key application, to teach the extrusion die. Further, there is noargument in the reexamination request that Jones is being applied in a manner different than it was appliedin the prosecution of the Key application.The Horn publication has been argued to show the connection of the support means to the extruder viabolts, as recited in claim 3 of the Key patent. Although this teaching was not provided in the prosecutionof the Key application, the teaching would not be considered to be important to a reasonable examiner indeciding whether or not the Key claims are patentable.

The references set forth in the request have been considered both alone and in combination. They fail toraise a substantial new question of patentability as to any one of the Key patent claims.In view of the above, the request for reexamination is DENIED.All correspondence relating to this inter partes reexamination proceeding should be directed:

Registered users may submit via the electronic filing system EFS-Web, atBy EFS:https://efs.uspto.gov/efile/myportal/efs-registered.Mail Stop Inter Partes ReexamBy Mail to:Attn: Central Reexamination UnitUnited States Patent & Trademark OfficeP.O. Box 1450Alexandria, VA 22313-1450(571) 273-9900 Central Reexamination UnitBy FAX to:Customer Service WindowBy hand (or

deliveryservice):

Randolph Building401 Dulany StreetAlexandria, VA 22314

For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i) (C) and (ii) states that correspondence (except for a requestfor reexamination and a corrected or replacement request for reexamination) will be considered timely filedif (a) it is transmitted via the Office’s electronic filing system in accordance with 37 CFR 1.6(a)(4), and (b)includes a certificate of transmission for each piece of correspondence stating the date of transmission,which is prior to the expiration of the set period of time in the Office action.Any inquiry concerning this communication or earlier communications from the examiner, or as to thestatus of this proceeding, should be directed to the Central Reexamination Unit at telephone number (571)272-7705.

/John Doe/

2600-48Rev. 10.2019, June 2020


John DoePrimary ExaminerCRU Art Unit 3998 /ARI/Conferee /BZ/Conferee

2647.02 Processing of Decision [R-07.2015]

After the examiner has prepared the decision (andany Office action to accompany the decision) theheading is added to the cover page (PTOL-2063) ofthe decision. Where the first Office actionaccompanies the decision, the heading is also printedon the cover page (PTOL-2064) of the first Officeaction, and the first Office action is mailed with thedecision.

A transmittal form PTOL-2070 with the third partyrequester’s address will be completed (if a copy formailing is not already in the case file). Thetransmittal form PTOL-2070 is used to forwardcopies of Office actions and other communicationsto the third party requester. Whenever an Officeaction is issued, a copy of this form will be madeand attached to a copy of the Office action. Use ofthis form removes the need to retype the third partyrequester’s address each time a mailing is made.

Where the decision is a grant of reexamination, thefirst Office action on the merits will ordinarily beprepared and mailed with the order grantingreexamination. See MPEP § 2660.

The file will be appropriately annotated, updatescanning will be effected, and appropriate PALMentries will be made at this time.

2648 Petition From Denial of Request[R-07.2015]



The third party requester may seek review by a petition to theDirector under § 1.181 within one month of the mailing date ofthe examiner’s determination refusing to order inter partes reexamination. Any such petition must comply with § 1.181(b).

If no petition is timely filed or if the decision on petition affirmsthat no substantial new question of patentability has been raised,the determination shall be final and nonappealable.



The third party requester may seek review by a petition to theDirector under § 1.181 within one month of the mailing date ofthe examiner’s determination refusing to order inter partes reexamination. Any such petition must comply with § 1.181(b).If no petition is timely filed or if the decision on petition affirmsthat a reasonable likelihood that the requester will prevail withrespect to at least one of the claims challenged in the requesthas not been established, the determination shall be final andnonappealable.

PROCESSING OF PETITION UNDER 37 CFR 1.927

Once a request for inter partes reexamination hasbeen denied, the Central Reexamination Unit (CRU)will allow time for seeking review of the examiner’sdetermination refusing reexamination. If no petitionis filed within one (1) month, the CRU will processthe reexamination as a concluded reexamination file.See MPEP § 2647 and § 2694. If a petition is timelyfiled, the petition (together with the reexaminationfile) is forwarded to the office of the CRU Directorfor decision. The CRU Director then reviews theexaminer’s determination that a substantial newquestion of patentability has not been raised or thatthere is no reasonable likelihood that the requesterwill prevail. The CRU Director’s review is de novo.Each decision by the CRU Director concludes withthe following paragraph:

This decision is final and nonappealable. See35 U.S.C. 312(c) and 37 CFR 1.927. No furthercommunication on this matter will beacknowledged or considered.

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If the petition is granted, the decision of the CRUDirector should include a sentence stating that anOffice action will be mailed in due course.

The CRU Director signs the decision granting thepetition, and then forwards the reexamination file,together with the decision, to the CRU support stafffor mailing of the decision, update scanning andPALM processing. The CRU Supervisory PatentReexamination Specialist (SPRS) may reassign thereexamination to another examiner pursuant to 37CFR 1.931(b), notifies the CRU technical supportstaff of the assignment so that the new assignmentcan be entered in the PALM records, and forwardsthe file to the new examiner to prepare a first Officeaction.

In the situation in which the examiner'sdetermination failed to find any SNQ or RLP,reassignment to another examiner is the general rule.Only in exceptional circumstances where no otherexaminer is available and capable to give a properexamination, will the case remain with the examinerwho denied the request.

Under normal circumstances, the reexaminationproceeding is not reassigned to a primary examineror assistant examiner who was involved in any partof the examination of the patent for whichreexamination is requested, or was so-involved inthe examination of the parent of the patent. The CRUDirector can make an exception to this practice andreassign the reexamination proceeding to anexaminer involved with the original examination (ofthe patent) only where unusual circumstances arefound to exist. For example, where there are noexaminers other than an original examiner of thepatent and the examiner who issued the denial withadequate knowledge of the relevant technology, theCRU Director may permit reassignment of thereexamination proceeding to an examiner thatoriginally examined the patent.

The requester may seek review of a denial of arequest for reexamination only by petitioning theDirector of the USPTO under 37 CFR 1.927 and1.181 within one (1) month of the mailing date ofthe decision denying the request for reexamination.Additionally, any request for an extension of thetime to file such a petition from the examiner’s

denial of a request for reexamination can only beentertained by filing a petition under 37 CFR 1.183with the appropriate fee to waive the time provisionsof 37 CFR 1.927.

After the time for petition has expired (without apetition being filed), or a petition has been filed andthe decision affirms the denial of the request, apartial refund of the filing fee for the request forreexamination is made to the third party requester.35 U.S.C. 312(c) and 37 CFR 1.26(c). A decisionon a petition seeking review of an Office denial toreexamine a patent under 37 CFR 1.927 and 1.181is final and is not appealable.

37 CFR 1.927 applies only to challenging a basisfor denying of reexamination; it does not apply tochallenging a basis for granting of reexamination.

If an order granting reexamination includes adetermination that one or more alleged SNQs orRLPs did not raise a SNQ or RLP, respectively, thethird party requester may (within one month of themailing date of the order) file a petition under 37CFR 1.927 for reconsideration of the determination.

2649 - 2653 [Reserved]

2654 Conduct of Inter Partes ReexaminationProceedings [R-07.2015]

35 U.S.C. 314 Conduct of inter partes reexaminationproceedings

[Editor Note: Applicable only to a request for inter partesreexamination filed prior to September 16, 2012]

(a) IN GENERAL.— Except as otherwise provided in thissection, reexamination shall be conducted according to theprocedures established for initial examination under theprovisions of sections 132 and 133. In any inter partesreexamination proceeding under this chapter, the patent ownershall be permitted to propose any amendment to the patent anda new claim or claims, except that no proposed amended or newclaim enlarging the scope of the claims of the patent shall bepermitted.

(b) RESPONSE.—

(1) With the exception of the inter partes reexaminationrequest, any document filed by either the patent owner or thethird-party requester shall be served on the other party. Inaddition, the Office shall send to the third-party requester a copyof any communication sent by the Office to the patent owner

2600-50Rev. 10.2019, June 2020

MANUAL OF PATENT EXAMINING PROCEDURE§ 2649-2653

concerning the patent subject to the inter partes reexaminationproceeding.

(2) Each time that the patent owner files a response toan action on the merits from the Patent and Trademark Office,the third-party requester shall have one opportunity to file writtencomments addressing issues raised by the action of the Officeor the patent owner’s response thereto, if those written commentsare received by the Office within 30 days after the date of serviceof the patent owner’s response.

(c) SPECIAL DISPATCH.— Unless otherwise providedby the Director for good cause, all inter partes reexaminationproceedings under this section, including any appeal to the Boardof Patent Appeals and Interferences, shall be conducted withspecial dispatch within the Office.

37 CFR 1.937 Conduct of inter partes reexamination.

(a) All inter partes reexamination proceedings, includingany appeals to the Patent Trial and Appeal Board, will beconducted with special dispatch within the Office, unless theDirector makes a determination that there is good cause forsuspending the reexamination proceeding.

(b) The inter partes reexamination proceeding will beconducted in accordance with §§ 1.104 through 1.116, thesections governing the application examination process, andwill result in the issuance of an inter partes reexaminationcertificate under § 1.997, except as otherwise provided.

(c) All communications between the Office and the partiesto the inter partes reexamination which are directed to the meritsof the proceeding must be in writing and filed with the Officefor entry into the record of the proceeding.

(d) A petition in an inter partes reexamination proceedingmust be accompanied by the fee set forth in § 1.20(c)(6), exceptfor petitions under § 1.956 to extend the period for response bya patent owner, petitions under § 1.958 to accept a delayedresponse by a patent owner, petitions under § 1.78 to accept anunintentionally delayed benefit claim, and petitions under§ 1.530(l) for correction of inventorship in a reexaminationproceeding.

Once inter partes reexamination is ordered, a firstOffice action on the merits will be issued (the firstOffice action will ordinarily be mailed with theorder; see MPEP § 2660), and prosecution willproceed. Each time the patent owner responds to anOffice action, the third party requester may commenton the Office action and the patent owner response,and thereby participate in the proceeding.

Reexamination will proceed even if the order isreturned undelivered. As pointed out in MPEP §2630, the notice under 37 CFR 1.11(c) isconstructive notice to the patent owner, and lack ofresponse from the patent owner will not delayreexamination.

Examination will be conducted in accordance with37 CFR 1.104, 1.105, 1.110-1.113, 1.115, and 1.116(35 U.S.C.132 and 133) and will result in theissuance of a reexamination certificate under 37 CFR1.997. The proceeding shall be conducted with“special dispatch” pursuant to 35 U.S.C. 314(c). Thepatent owner and the third party requester are sentcopies of all Office actions. Also, the patent ownerand the third party requester must serve copies ofall their submissions to the Office on each other.Citations of art submitted in the patent file prior toissuance of an order for reexamination will beconsidered by the examiner during thereexamination.

2655 Who Reexamines [R-07.2015]

The examination is ordinarily conducted by the samepatent examiner who made the decision that thereexamination request should be granted. See MPEP§ 2636.

However, if a petition under 37 CFR 1.927 is grantedoverturning a refusal to order reexamination of allof the claims requested to be reexamined, thereexamination proceeding will normally beconducted by another examiner. See MPEP § 2648.

2656 Prior Art Patents and PrintedPublications Reviewed by Examiner inReexamination [R-07.2015]

Typically, the primary source of prior art will be thepatents and printed publications cited in the requestfor inter partes reexamination.

Subject to the discussion provided below in thissection, the examiner must also consider patents andprinted publications:

(A) cited by another reexamination requesterunder 37 CFR 1.510 or 37 CFR 1.915;

(B) cited by the patent owner under a duty ofdisclosure (37 CFR 1.933) in compliance with 37CFR 1.98;

(C) discovered by the examiner in searching;

(D) of record in the patent file from earlierexamination;

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(E) of record in the patent file from any 37 CFR1.501 submission prior to date of an order if itcomplies with 37 CFR 1.98; and

(F) cited by the third party requester underappropriate circumstances pursuant to 37 CFR 1.948.

Where patents, publications, and other suchdocuments are submitted by a party (patent owneror requester) in compliance with the requirementsof the rules, the requisite degree of consideration tobe given to such information will normally be limitedby the degree to which the party filing the documenthas explained its content and relevance. The initialsof the examiner placed adjacent to the citations onthe form PTO/SB/08A and 08B or its equivalent,without an indication to the contrary, do not signifythat the document has been considered any furtherthan noted above.

As to (D) above, the degree of consideration ofinformation from the patent file and its parent filesis dependent on the availability of the information.For example, as to a reference other than a U.S.patent and U.S. patent publication that is not scannedinto the Image File Wrapper (IFW) what was saidabout that reference in the patent’s record is the fullextent of consideration, unless otherwise indicated,or unless parties appropriately supply a copy.

As to (B) and (E) above, 37 CFR 1.98(a)(2) requiresa legible copy of:

(1) each foreign patent;

(2) each publication or that portion which causedit to be listed, other than U.S. patents and U.S. patentapplication publications unless required by theOffice;

(3) for each cited pending unpublished U.S.application, the application specification includingthe claims, and any drawing of the application, orthat portion of the application which caused it to belisted including any claims directed to that portion;

(4) all other information or that portion whichcaused it to be listed.

It is not required nor is it permitted that partiessubmit copies of copending reexaminationproceedings and applications (which copies can bemistaken for a new request/filing); rather, submittersmay provide the application/proceeding serial/control

number and its status. A submission that is notpermitted entry will be returned, expunged, ordiscarded at the sole discretion of the Office.

The exception to the requirement for reference copiesnoted in 37 CFR 1.98(d)(1) does not apply toreexamination proceedings since a reexaminationproceeding does not receive 35 U.S.C. 120 benefitfrom the patent.

AFTER THE NOTICE OF INTENT TO ISSUE INTER PARTES REEXAMINATION CERTIFICATE(NIRC):

Once the NIRC has been mailed, the reexaminationproceeding is forwarded for publication of thereexamination certificate. Thus, when the patentowner provides a submission of patents and printedpublications or other information described in 37CFR 1.98(a) after the NIRC has been mailed theproceeding has entered the publication process forprinting the reexamination certificate. Toautomatically delay prosecution by pulling theproceeding from that process when such asubmission has been filed, without more, would becontrary to the Office’s statutory mandate for“special dispatch,” as set forth in 35 U.S.C. 314.

For this reason, the submission must be accompaniedby (A) a factual accounting providing a sufficientexplanation of why the information submitted couldnot have been submitted earlier, (B) an unequivocalstatement that one or more claims are unpatentable,and (C) an amendment to such claim or claims, andan explanation as to how the amendment causes suchclaim or claims to be patentable. This must beprovided via a petition under 37 CFR 1.182 (withpetition fee) for entry and consideration of theinformation submitted after NIRC. Theserequirements are necessary to provide a basis forinterrupting the proceeding after NIRC, in order forthe Office to comply with its the statutory mandatefor “special dispatch.”

These requirements are similar to the requirementsto withdraw an application from issue as set forth in37 CFR 1.313(c)(1). The printing cycle for anapplication occurs after the payment of the issue fee(there is no issue fee in reexamination), and thus, inorder to withdraw an application from issue after

2600-52Rev. 10.2019, June 2020


payment of the issue fee, the requirements of 37 CFR1.313(c) must be met. Based on the statutoryrequirement for “special dispatch,” the requirementsfor withdrawal of a reexamination proceeding fromissue, i.e., its printing cycle, after NIRC are at leastas burdensome as those set forth in 37 CFR 1.313(b)and (c). Accordingly, where a submission of patentsand printed publications or other informationdescribed in 37 CFR 1.98(a) is made after NIRC,the patent owner must provide an unequivocalstatement as to why the art submitted makes at leastone claim unpatentable, an amendment to such claimor claims, and an explanation as to how theamendment causes such claim or claims to bepatentable. This is in addition to the above-discussedfactual accounting providing a sufficient explanationof why the information submitted could not havebeen submitted earlier (see item (A) in the paragraphabove).

2657 Listing of Prior Art [R-07.2015]

The reexamination request must provide a listing ofthe patents and printed publications (discussed inthe request) as provided for in 37 CFR 1.98. SeeMPEP § 2614. The examiner must list on a formPTO-892, if not already listed on a formPTO/SB/08A or 08B, or PTO/SB/42 (or on a formhaving a format equivalent to one of these forms),all prior art patents or printed publications whichhave been cited in the decision on the request,applied in making rejections or cited as beingpertinent during the reexamination proceedings. Suchprior art patents or printed publications may havecome to the examiner’s attention because they were:

(A) of record in the patent file due to a prior artsubmission under 37 CFR 1.501 which was receivedprior to the date of the order;

(B) of record in the patent file as result of earlierexamination proceedings as to the patent;

(C) discovered by the examiner during a priorart search; or

(D) submitted pursuant to 37 CFR 1.948.

All citations listed on form PTO-892, and allcitations not lined-through on any form PTO/SB/08Aor 08B, or PTO/SB/42 (or on a form having a formatequivalent to one of these forms), will be the list of

prior art documents considered in the reexaminationproceeding. A notice will be printed on thereexamination certificate to state that the list of citedprior art documents will be available via PAIR bythe reexamination control number.

2658 Scope of Inter Partes Reexamination [R-10.2019]

37 CFR 1.906 Scope of reexamination in inter partesreexamination proceeding.

(a) Claims in an inter partes reexamination proceedingwill be examined on the basis of patents or printed publicationsand, with respect to subject matter added or deleted in thereexamination proceeding, on the basis of the requirements of35 U.S.C. 112.

(b) Claims in an inter partes reexamination proceedingwill not be permitted to enlarge the scope of the claims of thepatent.

(c) Issues other than those indicated in paragraphs (a) and(b) of this section will not be resolved in an inter partesreexamination proceeding. If such issues are raised by the patentowner or the third party requester during a reexaminationproceeding, the existence of such issues will be noted by theexaminer in the next Office action, in which case the patentowner may desire to consider the advisability of filing a reissueapplication to have such issues considered and resolved.

Inter partes reexamination differs from ex partereexamination in matters of procedure, such as whenthe third party requester can participate, the types ofOffice actions and the timing of issuance of theOffice actions, and the requirement for identificationof the real party in interest. Inter partesreexamination also differs from ex partereexamination in the estoppel effect it provides asto the third party requesters and when the initiationof a reexamination is prohibited.

Inter partes reexamination does not, however, differfrom ex parte reexamination ordered under 35U.S.C. 304 as to the substance to be considered inthe proceeding.

I. PRIOR ART PATENTS OR PRINTEDPUBLICATIONS, AND DOUBLE PATENTING

Rejections on art in inter partes reexaminationproceedings may only be made on the basis of priorart patents or printed publications under thefirst-to-invent prior art regime, or double patenting.See MPEP §§ 2258 and 2258.01 for a discussion ofart rejections in reexamination proceedings based

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on prior art patents or printed publications. Thediscussion there includes making double patentingrejections and the use of admissions.

It is to be noted that the decisions cited in MPEP§§ 2258 and 2258.01 for applying the art in ex partereexamination proceedings apply analogously in inter partes reexamination proceedings, since thestatutory language relied upon in those decisions,which is taken from the ex parte reexaminationstatute, is also found in the inter partesreexamination statute.

II. COMPLIANCE WITH 35 U.S.C. 112

Where new or amended claims are presented orwhere any part of the disclosure is amended, theclaims of the reexamination proceeding are to beexamined for compliance with 35 U.S.C. 112. SeeMPEP § 2258 for a discussion of the examinationbased upon 35 U.S.C. 112 in an ex partereexamination proceeding ordered under 35 U.S.C.304, which discussion applies to inter partesreexamination in the same way it applies to ex partereexamination ordered under 35 U.S.C. 304. Seealso In re NTP, Inc., 654 F.3d 1268, 99 USPQ2d1500 (Fed. Cir. 2011)(holding that the Office is notprohibited from performing a 35 U.S.C. 112 writtendescription priority analysis during reexamination).

III. CLAIMS IN PROCEEDING MUST NOTENLARGE SCOPE OF THE CLAIMS OF THEPATENT

Where new claims are presented, or where any partof the disclosure is amended, the claims of the interpartes reexamination proceeding should be examinedunder 35 U.S.C. 314, to determine whether theyenlarge the scope of the original claims. 35 U.S.C.314(a) states that “no proposed amended or newclaim enlarging the scope of the claims of the patentshall be permitted” in an inter partes reexaminationproceeding.

A. Criteria for Enlargement of the Scope of the Claims

A claim presented in a reexamination proceedingenlarges the scope of the claims of the patent beingreexamined where the claim is broader than eachand every claim of the patent. See MPEP § 1412.03

for guidance as to when the presented claim isconsidered to be a broadening claim as comparedwith the claims of the patent, i.e., what is broadeningand what is not. If a claim is considered to be abroadening claim for purposes of reissue, it islikewise considered to be a broadening claim inreexamination.

B. Amendment of the Specification

Where the specification is amended in areexamination proceeding, the examiner should makecertain that the amendment to the specification doesnot enlarge the scope of the claims of the patent. Anamendment to the specification can enlarge the scopeof the claims by redefining the scope of the terms ina claim, even where the claims are not amended inany respect.

C. Rejection of Claims Where There Is Enlargement

Any claim which enlarges the scope of the claimsof the patent should be rejected under 35 U.S.C.314(a). Form paragraph 26.03.01 is to be employedin making the rejection.

¶ 26.03.01 Rejection, 35 U.S.C. 314(a), Claim Enlarges Scopeof Patent

Claim [1] rejected under 35 U.S.C. 314(a) as enlarging thescope of the claims of the patent being reexamined. 35 U.S.C.314(a) states that “no proposed amended or new claim enlargingthe scope of the claims of the patent shall be permitted” in an inter partes reexamination proceeding. A claim presented in areexamination “enlarges the scope” of the patent claims wherethe claim is broader than the claims of the patent. A claim isbroadened if it is broader in any one respect, even though it maybe narrower in other respects. [2].

Examiner Note:

The claim limitations which are considered to broaden the scopeshould be identified and explained in bracket 2. See MPEP §2658.

IV. OTHER MATTERS

A. Patent Under Reexamination Subject of a PriorOffice or Court Decision

Where some of the patent claims in a patent beingreexamined have been the subject of a prior Officeor court decision, see MPEP § 2642. Where otherproceedings involving the patent are copending with

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the reexamination proceeding, see MPEP § 2686 -§ 2686.04.

Patent claims not subject to reexamination becauseof their prior adjudication by a court should beidentified. See MPEP § 2642. For handling a “live”claim dependent on a patent claim not subject toreexamination, see MPEP § 2660.03. All addedclaims will be examined.

Where grounds set forth in a prior Office or federalcourt decision, are not based on patents or printedpublications, yet clearly raise questions as to theclaims, the examiner’s Office action should clearlystate that the claims have not been examined as tothose grounds not based on patents or printedpublications nor applicable portions of 35 U.S.C.112 stated in the prior decision. See 37 CFR1.906(c); see also In re Knight, 217 USPQ 294(Comm’r Pat. 1982).

B. “Live” Claims That Are Reexamined DuringReexamination

The Office’s determination in both the order forreexamination and the examination stage of thereexamination will generally be limited solely to areview of the “live” claims (i.e., existing claims notheld invalid by a final decision, after all appeals) forwhich reexamination has been requested. If therequester was interested in having all of the claimsreexamined, requester had the opportunity to includethem in its request for reexamination. However, ifthe requester chose not to do so, those claim(s) forwhich reexamination was not requested willgenerally not be reexamined by the Office. It isfurther noted that 35 U.S.C. 311(b)(2) requires thata requester “set forth the pertinency and manner ofapplying cited prior art to every claim for whichreexamination is requested.” If the requester fails toapply the art to certain claims, then the requester isnot statutorily entitled to reexamination of suchclaims. If a request fails to set forth the pertinencyand manner of applying the cited art to any claimfor which reexamination is requested as required by37 CFR 1.915(b), that claim will generally not bereexamined.

The decision to reexamine any claim for whichreexamination has not been requested lies within the

sole discretion of the Office, to be exercised basedon the individual facts and situation of eachindividual case. If the Office chooses to reexamineany claim for which reexamination has not beenrequested, it is permitted to do so. In addition, theOffice may always initiate a reexamination on itsown initiative of the non-requested claim (35 U.S.C.303(a)). Similarly, if prior art patents or printedpublications are discovered during reexaminationwhich raise a substantial new question ofpatentability (for a reexamination filed under thatstandard) or a reasonable likelihood that the requesterwill prevail (for a reexamination filed under thatstandard) as to one or more patent claims for whichreexamination has not been ordered (whilereexamination has been ordered for other claims inthe patent), and these documents in turn raise acompelling rejection of such claims, then such claimsmay be added, within the sole discretion of theOffice, during the examination phase of theproceeding.

C. Restriction Not Proper in Reexamination

Restriction requirements cannot be made in areexamination proceeding since no statutory basisexists for restriction in a reexamination proceeding.Note also that the addition of claims to a “separateand distinct” invention to the patent would beconsidered as being an enlargement of the scope ofthe patent claims and therefore are prohibited duringreexamination. See Ex parte Wikdahl, 10 USPQ2d1546 (Bd. Pat. App. & Inter. 1989). See MPEP §1412.03.

D. Ancillary Matters

There are matters ancillary to reexamination whichare necessary and incident to patentability whichwill be considered. Amendments may be made tothe specification to correct, for example, aninadvertent failure to claim foreign priority or thecontinuing status of the patent relative to a parentapplication if such correction is necessary toovercome a reference applied against a claim of thepatent.

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E. Claiming Foreign Priority or Domestic Benefit inReexamination

See MPEP § 2258.02 for guidance on claimingforeign priority or domestic benefit in areexamination proceeding.

F. Correction of Inventorship

Correction of inventorship may also be made duringreexamination. See 37 CFR 1.324 and MPEP § 1481for petition for correction of inventorship in a patent.If a petition filed under 37 CFR 1.324 is granted, aCertificate of Correction indicating the change ofinventorship will not be issued, because thereexamination certificate that will ultimately issuewill contain the appropriate change-of-inventorshipinformation (i.e., the Certificate of Correction is ineffect merged with the reexamination certificate).

G. Affidavits in Reexamination

Affidavits under 37 CFR 1.131(a) and 1.132 maybe utilized in a reexamination proceeding. Note,however, that an affidavit under 37 CFR 1.131(a)may not be used to “swear behind” a reference patentif the reference patent is claiming the same inventionas the patent undergoing reexamination. In such asituation, the patent owner may, if appropriate, seekto raise this issue via an affidavit under 37 CFR1.131(c) (see MPEP § 718) or in an interferenceproceeding via an appropriate reissue application ifsuch a reissue application may be filed (see MPEP§ 1449.02).

H. Issues Not Considered in Reexamination

If questions other than those indicated above (forexample, questions of patentability based on publicuse or on sale, conduct issues, abandonment underpre-AIA 35 U.S.C. 102(c), etc.) are raised by thethird party requester or the patent owner during areexamination proceeding, the existence of suchquestions may be noted by the examiner in the nextOffice action. Such questions could arise in areexamination requester’s 37 CFR 1.915 request orin 37 CFR 1.947 comments by the third partyrequester. For written comments by the requesterduring a reexamination proceeding which are notlimited to addressing issues raised by the action of

the Office or the patent owner’s response, see MPEP§ 2666.05.

Note form paragraph 26.03.

¶ 26.03 Issue Not Within Scope of Inter PartesReexamination

An issue has been raised in the present reexamination proceedingthat is not within the scope of inter partes reexaminationproceedings. [1]. This issue will not be considered in the presentproceeding. 37 CFR 1.906(c).

Examiner Note:

1. In bracket 1, identify the issues.

2. This paragraph may be used either when the patent owneror the third party requester raises issues such as (but not limitedto) public use or on sale, conduct, or abandonment of theinvention. Such issues should not be raised independently bythe patent examiner.

If questions of patentability based on public use oron sale, conduct issues, abandonment under 35U.S.C. 102(c), etc. are independently discovered bythe examiner during a reexamination proceeding butwere not raised by the third party requester or thepatent owner, the existence of such questions willnot be noted by the examiner in an Office action,because 37 CFR 1.906(c) is only directed to suchquestions “raised by the patent owner or the thirdparty requester.”

I. Request for Reexamination Filed on Patent after itHas Been Reissued

Where a request for reexamination is filed on apatent after it has been reissued, reexamination willbe denied because the patent on which the requestfor reexamination is based has been surrendered.Should reexamination of the reissued patent bedesired, a new request for reexamination including,and based on, the specification and claims of thereissue patent must be filed.

Any amendment made by the patent owner in theprosecution of the reexamination proceeding, shouldtreat the changes made by the granted reissue patentas the text of the patent, and all bracketing andunderlining made with respect to the patent aschanged by the reissue.

Where the reissue patent issues after the filing of arequest for reexamination, see MPEP § 2686.03.

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2659 Res Judicata and Collateral Estoppelin Reexamination Proceedings [R-07.2015]

MPEP § 2642 and § 2686.04 relate to the Officepolicy controlling the determination on a request forreexamination and the subsequent examination phaseof the reexamination, where there has been a federalcourt decision on the merits as to the patent forwhich reexamination is requested.

Claims finally held invalid by a federal court, afterall appeals, will be withdrawn from considerationand not reexamined during a reexaminationproceeding. A rejection on the grounds of resjudicata for such withdrawn claims will not beappropriate during reexamination. One of theessential elements of claim preclusion (res judicata)is the involvement of the same parties, or parties inprivity with the original parties. The doctrine of resjudicata based on a court holding in an infringementproceeding is not applicable in reexaminationproceedings, because the Office was not a party tothe litigation.

In In re Trans Texas Holdings Corp., 498 F.3d 1290,83 USPQ2d 1835 (Fed. Cir. 2007), the court heldthat issue preclusion (collateral estoppel) could notbe applied against the Office based on a districtcourt holding in an infringement proceeding, becausethe Office was not a party to the earlier infringementproceeding and did not have “a full and fairopportunity” to litigate the issue; See also In reConstruction Equipment Company, 665 F.3d 1254,100 USPQ2d 1922 (Fed. Cir. 2011), in which themajority did not adopt the dissent view thatreexamination was barred by claim preclusion (resjudicata) or issue preclusion (collateral estoppel).

2660 First Office Action [R-07.2015]

37 CFR 1.935 Initial Office action usually accompanies orderfor inter partes reexamination.

The order for inter partes reexamination will usually beaccompanied by the initial Office action on the merits of thereexamination.

37 CFR 1.104 Nature of examination.

[Editor's Note: As in effect prior to March 16, 2013. For thecurrent rule, see 37 CFR 1.104]

(a) Examiner’s action.

(1) On taking up an application for examination or apatent in a reexamination proceeding, the examiner shall makea thorough study thereof and shall make a thorough investigationof the available prior art relating to the subject matter of theclaimed invention. The examination shall be complete withrespect both to compliance of the application or patent underreexamination with the applicable statutes and rules and to thepatentability of the invention as claimed, as well as with respectto matters of form, unless otherwise indicated.

(2) The applicant, or in the case of a reexaminationproceeding, both the patent owner and the requester, will benotified of the examiner’s action. The reasons for any adverseaction or any objection or requirement will be stated in an Officeaction and such information or references will be given as maybe useful in aiding the applicant, or in the case of areexamination proceeding the patent owner, to judge thepropriety of continuing the prosecution.

(3) An international-type search will be made in allnational applications filed on and after June 1, 1978.

(4) Any national application may also have aninternational-type search report prepared thereon at the time ofthe national examination on the merits, upon specific writtenrequest therefor and payment of the international-type searchreport fee set forth in § 1.21(e). The Patent and Trademark Officedoes not require that a formal report of an international-typesearch be prepared in order to obtain a search fee refund in alater filed international application.

(b) Completeness of examiner’s action. The examiner’saction will be complete as to all matters, except that inappropriate circumstances, such as misjoinder of invention,fundamental defects in the application, and the like, the actionof the examiner may be limited to such matters before furtheraction is made. However, matters of form need not be raised bythe examiner until a claim is found allowable.

(c) Rejection of claims.

(1) If the invention is not considered patentable, or notconsidered patentable as claimed, the claims, or those consideredunpatentable will be rejected.

(2) In rejecting claims for want of novelty or forobviousness, the examiner must cite the best references at hisor her command. When a reference is complex or shows ordescribes inventions other than that claimed by the applicant,the particular part relied on must be designated as nearly aspracticable. The pertinence of each reference, if not apparent,must be clearly explained and each rejected claim specified.

(3) In rejecting claims the examiner may rely uponadmissions by the applicant, or the patent owner in areexamination proceeding, as to any matter affectingpatentability and, insofar as rejections in applications areconcerned, may also rely upon facts within his or her knowledgepursuant to paragraph (d)(2) of this section.

(4) Subject matter which is developed by anotherperson which qualifies as prior art only under 35 U.S.C. 102(e),(f) or (g) may be used as prior art under 35 U.S.C. 103 againsta claimed invention unless the entire rights to the subject matterand the claimed invention were commonly owned by the sameperson or subject to an obligation of assignment to the sameperson at the time the claimed invention was made.

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(i) Subject matter developed by another person anda claimed invention shall be deemed to have been commonlyowned by the same person or subject to an obligation ofassignment to the same person in any application and in anypatent granted on or after December 10, 2004, if:

(A) The claimed invention and the subjectmatter was made by or on behalf of parties to a joint researchagreement that was in effect on or before the date the claimedinvention was made;

(B) The claimed invention was made as aresult of activities undertaken within the scope of the jointresearch agreement; and

(C) The application for patent for the claimedinvention discloses or is amended to disclose the names of theparties to the joint research agreement.

(ii) For purposes of paragraph (c)(4)(i) of thissection, the term “joint research agreement” means a writtencontract, grant, or cooperative agreement entered into by twoor more persons or entities for the performance of experimental,developmental, or research work in the field of the claimedinvention.

(iii) To overcome a rejection under 35 U.S.C.103(a) based upon subject matter which qualifies as prior artunder only one or more of 35 U.S.C. 102(e), (f) or (g) via 35U.S.C. 103(c)(2), the applicant must provide a statement to theeffect that the prior art and the claimed invention were made byor on the behalf of parties to a joint research agreement, withinthe meaning of 35 U.S.C. 103(c)(3) and paragraph (c)(4)(ii) ofthis section, that was in effect on or before the date the claimedinvention was made, and that the claimed invention was madeas a result of activities undertaken within the scope of the jointresearch agreement.

(5) The claims in any original application naming aninventor will be rejected as being precluded by a waiver in apublished statutory invention registration naming that inventorif the same subject matter is claimed in the application and thestatutory invention registration. The claims in any reissueapplication naming an inventor will be rejected as beingprecluded by a waiver in a published statutory inventionregistration naming that inventor if the reissue application seeksto claim subject matter:

(i) Which was not covered by claims issued in thepatent prior to the date of publication of the statutory inventionregistration; and

(ii) Which was the same subject matter waived inthe statutory invention registration.

(d) Citation of references.

(1) If domestic patents are cited by the examiner, theirnumbers and dates, and the names of the patentees will be stated.If domestic patent application publications are cited by theexaminer, their publication number, publication date, and thenames of the applicants will be stated. If foreign publishedapplications or patents are cited, their nationality or country,numbers and dates, and the names of the patentees will be stated,and such other data will be furnished as may be necessary toenable the applicant, or in the case of a reexaminationproceeding, the patent owner, to identify the published

applications or patents cited. In citing foreign publishedapplications or patents, in case only a part of the document isinvolved, the particular pages and sheets containing the partsrelied upon will be identified. If printed publications are cited,the author (if any), title, date, pages or plates, and place ofpublication, or place where a copy can be found, will be given.

(2) When a rejection in an application is based on factswithin the personal knowledge of an employee of the Office,the data shall be as specific as possible, and the reference mustbe supported, when called for by the applicant, by the affidavitof such employee, and such affidavit shall be subject tocontradiction or explanation by the affidavits of the applicantand other persons.

(e) Reasons for allowance. If the examiner believes thatthe record of the prosecution as a whole does not make clearhis or her reasons for allowing a claim or claims, the examinermay set forth such reasoning. The reasons shall be incorporatedinto an Office action rejecting other claims of the applicationor patent under reexamination or be the subject of a separatecommunication to the applicant or patent owner. The applicantor patent owner may file a statement commenting on the reasonsfor allowance within such time as may be specified by theexaminer. Failure by the examiner to respond to any statementcommenting on reasons for allowance does not give rise to anyimplication.

I. PREPARATION AND MAILING OF FIRSTOFFICE ACTION

The first Office action on the merits will ordinarilybe mailed together with the order grantingreexamination. In some instances, however, it maynot be practical or possible to mail the first Officeaction together with the order. For example, thereexamination file may have been provided to theexaminer too late to include an Office action togetherwith the order and still meet the deadline for mailingthe order granting the request. Another example iswhere certain information or copies of prior art maynot be available until after the deadline. In thesesituations, the order would be prepared and mailed,and the Office action would be mailed at a later date.In addition, a first Office action is not mailed withthe order where the files will be forwarded fordecision on merger of a reexamination proceedingwith another reexamination proceeding and/or areissue application. Rather, an Office action wouldbe issued after the merger decision, as a single actionfor the merged proceeding. See MPEP § 2686.01and MPEP § 2686.02.

Where the order will be mailed without the firstOffice action, the order must indicate that an Officeaction will issue in due course. Form paragraph

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26.04 should be used to inform patent owner andrequester that the action was not inadvertently leftout or separated from the order.

¶ 26.04 First Action Not Mailed With Order

An Office action on the merits does not accompany this orderfor inter partes reexamination. An Office action on the meritswill be provided in due course.

Where the Office action cannot be mailed with theorder, the Office action should, in any event, beissued within two months from the mailing of theorder, unless the case is awaiting merger, in whichcase the Office action should be issued within onemonth from the mailing of the merger decision.

II. TYPES OF FIRST ACTION ON THE MERITS

Where all of the patent claims are found patentablein the first action, the examiner will issue an ActionClosing Prosecution (ACP). The ACP is discussedin MPEP § 2671.02.

Where the examiner determines that one or more ofthe patent claims are to be rejected, the first Officeaction on the merits will be similar to a first actionon the merits in an application (or ex partereexamination) where a rejection is made. In thissituation, even though the action will follow theformat of an action in an application, inter partesreexamination practice must be followed.Accordingly, inter partes reexamination forms willbe used, special inter partes reexamination timeperiods will be set, inter partes reexamination formparagraphs will be used, and the patent owner andthe third party requester must be sent a copy of theaction.

III. FORM AND CONTENT OF FIRST OFFICEACTION ON THE MERITS THAT IS NOT AN ACP

The examiner’s first Office action will be a statementof the examiner’s position, and it should besufficiently complete so that the second Office actioncan be an Action Closing Prosecution (ACP). SeeMPEP § 2671.02. Accordingly, it is intended thatthe first Office action be the primary action toestablish the issues which exist, such that the patentowner response and any third party comments can

place the proceeding in condition for the issuanceof an ACP.

The examiner’s first action should be comprehensiveand address all issues as to the prior art patentsand/or printed publications. The action will clearlyset forth each ground of rejection and/or ground ofobjection, and the reasons supporting the ground.The action will also clearly set forth eachdetermination favorable to the patentability ofclaims, i.e., each rejection proposed by the thirdparty requester that the examiner refuses to adopt.Reasons why the rejection proposed by the thirdparty requester is not appropriate (i.e., why the claimcannot be rejected under the ground proposed by thethird party requester) must be clearly stated for eachrejection proposed by the third party requester thatthe examiner refuses to adopt. Comprehensivereasons for patentability must be given for eachdetermination favorable to patentability of claims.See MPEP § 1302.14 for examples of suitablestatements of reasons. The examiner should notrefuse to adopt a rejection properly proposed by therequester as being cumulative to other rejectionsapplied. Rather, any such proposed rejection mustbe adopted to preserve parties’ appeal rights as tosuch proposed rejections.

In addition to the grounds and determinations setforth in the action, the first action should respond tothe substance of each argument raised in the requestby the third party requester pursuant to 37 CFR1.915. In addition, the action should address anyissues proper for reexamination that the examinerbecomes aware of independent of the request.

Where the request for reexamination includesmaterial such as a claim chart to explain a proposedrejection in order to establish the existence of asubstantial new question of patentability (for areexamination filed under that standard), or areasonable likelihood that the requester will prevail(for a reexamination filed under that standard), theexaminer may bodily incorporate the claim chart (orother matter) within the Office action. The examinermust, however, carefully review the claim chart (orother material) to ensure that any items incorporatedin a statement of the rejection clearly and completelyaddress the patentability of the claims. For actionssubsequent to the first Office action, the examiner

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must be careful to additionally address all patentowner responses to previous actions and third partyrequester comments.

Ordinarily, there will be no patent owner amendmentto address in the first Office action of the interpartes reexamination, because 37 CFR 1.939(b)prohibits a patent owner amendment prior to firstOffice action. Thus, the first Office action willordinarily contain no rejection based on 35 U.S.C.112; a rejection based on 35 U.S.C. 112 is proper inreexamination only when it is raised by anamendment. The only exception is where the newlyrequested and granted reexamination is merged withan existing reexamination proceeding which alreadycontains an amendment. In such a case, the firstOffice action for the new reexamination would be asubsequent action for the existing reexamination,and the amendment in the merged proceeding wouldbe examined for any 35 U.S.C. 112 issues raised bythe amendment and any improper broadening of theclaims under 35 U.S.C. 314.

In view of the requirement for “special dispatch” ininter partes reexamination proceedings (35 U.S.C.314(c)), it is intended that the examiner will issuean ACP at the earliest possible time. Accordingly,the first action should include a statement cautioningthe patent owner that a complete response should bemade to the action. The first action should furthercaution the patent owner that the requirements of 37CFR 1.116(b) will be strictly enforced after an ACPand that any amendment after the ACP must include“a showing of good and sufficient reasons why theyare necessary and were not earlier presented” inorder to be considered. Form paragraph 26.05 shouldbe inserted at the end of the first Office actionfollowed by form paragraph 26.73.

¶ 26.05 Papers To Be Submitted in Response to Action

In order to ensure full consideration of any amendments,affidavits or declarations, or other documents as evidence ofpatentability, such documents must be submitted in response tothis Office action. Submissions after the next Office action,which is intended to be an Action Closing Prosecution (ACP),will be governed by 37 CFR 1.116(b) and (d), which will bestrictly enforced.








P.O. Box 1450


By FAX to: (571) 273-9900



Randolph Building

401 Dulany Street




Examiner Note:



The Office action cover sheet is PTOL-2064. Wherethe Office action is a first Office action, the spaceon the PTOL-2064 for the date of the communicationto which the Office action is responsive to should

2600-60Rev. 10.2019, June 2020




not be filled in, since it is the order for reexaminationthat responds to the request for reexamination, notthe first Office action.

As with all other Office correspondence on themerits in a reexamination proceeding, the first Officeaction must be signed by a primary examiner.

IV. PROCESS OF PREPARING THE ACTION

Upon receipt of a patent owner response to the action(and third party requester comments wherepermitted) by the CRU, or upon the expiration ofthe time to submit same, the examiner will beinternally notified. The examiner will prepare forand set up a panel review conference pursuant toMPEP § 2671.03, to discuss the issuance of theOffice action. The examiner may prepare the Officeaction after the conference, or may prepare the Office

action prior to the conference and revise it, asneeded.

If the conference confirms the examiner’spreliminary decision to reject and/or allow theclaims, the Office action shall be issued and signedby the examiner, with the two or more otherconferees initialing the action (as “conferee”) toindicate their presence in the conference.

V. SAMPLE FIRST OFFICE ACTION

A sample of a first Office action in an inter partesreexamination proceeding for a reexamination filedunder the substantial new question of patentabilitystandard is set forth below. The examiner shouldleave the paper number blank, since IFW files donot have a paper number.

Rev. 10.2019, June 20202600-61


2600-62Rev. 10.2019, June 2020


This first Office action on the merits is being mailed together with the order granting reexamination. 37 CFR1.935.Claims 1-3:Claims 1-3 of the Smith patent are not being reexamined in view of the final decision in the ABC Corp. v. Smith,999 USPQ2d 99 (Fed. Cir. 2008). Claims 1-3 were held invalid by the U.S. Court of Appeals for the FederalCircuit.Claims 4 and 6:The following is a quotation of pre-AIA 35 U.S.C. 103 which forms the basis for all obviousness rejections setforth in this Office action:

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth insection 102 of this title, if the differences between the subject matter sought to be patented and the prior art aresuch that the subject matter as a whole would have been obvious at the time the invention was made to a personhaving ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by themanner in which the invention was made.Claims 4 and 6 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Berridge in view ofMcGee.Berridge teaches extruding a chlorinated polymer using the same extrusion structure recited in Claims 4 and 6 ofthe Smith patent. However, Berridge does not show supporting the extrusion barrel at an angle of 25-35 degreesto the horizontal, using spring supports. McGee teaches spring supporting an extrusion barrel at an angle of 30degrees, in order to decrease imperfections in extruded chlorinated polymers. It would have been obvious to oneof ordinary skill in the polymer extrusion art to support the extrusion barrel of Berridge on springs and at an angleof 30 degrees because McGee teaches this to be known in the polymer extrusion art for decreasing imperfectionsin extruded chlorinated polymers.This rejection was proposed by the third party requester in the request for reexamination, and it is being adoptedessentially as proposed in the request.Claim 5:Claim 5 is patentable over the prior art patents and printed publications because of the recitation of the specificoctagonal extrusion die used with the Claim 4 spring-supported barrel. This serves to reduce imperfections in theextruded chlorinated polymers and is not taught by the art of record, alone or in combination.Proposed third party requester rejection:In the request, at pages 10-14, the third party requester proposes the claim 5 be rejected based upon Berridge inview of McGee, and further taken with Bupkes or Gornisht. The third party requester points out that both Bupkesand Gornisht teach the use of an octagonal extrusion die to provide a smooth unified extrusion product.This rejection of claim 5 proposed by the third party requester is not adopted.While Bupkes and Gornisht do in fact teach the use of an octagonal extrusion die to provide smooth unifiedextrusion product, Bupkes teaches such for glass making and Gornisht teaches such for a food product. Despitethe argument presented at pages 12-13 of the request and the demonstration of exhibit A, the skilled artisan wouldnot equate the advantages obtained by Bupkes and Gornisht for glass and food, respectively, to the removal ofimperfections in a polymer melt being extruded to a solid plastic product. Thus, Bupkes and Gornisht are notdeemed to be combinable with Berridge and McGee for purposes of rejecting claim 5.Issue not within the scope of reexamination proceedings:An issue has been raised in the present reexamination proceeding that is not within the scope of inter partesreexamination. In the above-cited final court decision, a question is raised as to the possible public use of theinvention of Claim 4. This was pointed out by the third party requester in the request for reexamination. The issuewill not be considered in the present reexamination proceeding. 37 CFR 1.906(c).Other art made of record:

Rev. 10.2019, June 20202600-63


Swiss Patent 80555 and the American Machinist article are cited to show cutting and forming extruder apparatussomewhat similar to that claimed in the Smith patent.Conclusion:In order to ensure full consideration of any amendments, affidavits or declarations, or other documents as evidenceof patentability, such documents must be submitted in response to this Office action. Submissions after the nextOffice action, which is intended to be an action closing prosecution (ACP), will be governed by 37 CFR 1.116,which will be strictly enforced.All correspondence relating to this inter partes reexamination proceeding should be directed:

Registered users may submit via the electronic filingsystem EFS-Web, athttps://efs.uspto.gov/efile/myportal/efs-registered.

By EFS:

Mail Stop Inter Partes ReexamBy Mail to:Attn: Central Reexamination UnitCommissioner for PatentsUnited States Patent & Trademark OfficeP.O. Box 1450Alexandria, VA 22313-1450(571) 273-9900By FAX to:Central Reexamination UnitCustomer Service WindowBy hand:Randolph Building401 Dulany StreetAlexandria, VA 22314

For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i) (C) and (ii) states that correspondence (except for a request forreexamination and a corrected or replacement request for reexamination) will be considered timely filed if (a) itis transmitted via the Office’s electronic filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes acertificate of transmission for each piece of correspondence stating the date of transmission, which is prior to theexpiration of the set period of time in the Office action.Any inquiry concerning this communication or earlier communications from the examiner, or as to the status ofthis proceeding, should be directed to the Central Reexamination Unit at telephone number (571) 272-7705.

/John Doe/John DoePrimary ExaminerCRU Art Unit 3998/ARI/Conferee/BZ/Conferee

2660.01 [Reserved]

2660.02 The Title [R-08.2012]

Normally, the title of the patent will not need to bechanged during reexamination. In those very rareinstances where a change of the title does becomenecessary, the examiner should point out the need

for the change as early as possible in the prosecution,as a part of an Office action. This will give the patentowner an opportunity to comment on the changeprior to the examiner’s formal change in the title viaan examiner’s amendment accompanying the Noticeof Intent to Issue Inter Partes ReexaminationCertificate (NIRC) at the time that the prosecutionof the reexamination proceeding is to be terminated.A change in the title in a reexamination can only beeffected via a formal examiner’s amendment

2600-64Rev. 10.2019, June 2020


accompanying the NIRC. Changing the title andmerely initialing the change is not permitted inreexamination.

While a change in the title may be commented onby the patent owner, the final decision as to thechange is that of the examiner, and the examiner’sdecision is not subject to review. Accordingly, wherethe examiner notes the need for a change at the timeof issuing the NIRC, the examiner may make thechange at that point, even though the patent ownerwill not have an opportunity to comment on thechange.

An example of a situation where it would beappropriate to change the title is where all the claimsdirected to one of the categories of invention (in thepatent) are canceled via the reexaminationproceeding, it would be appropriate to change thetitle to delete reference to that category.

2660.03 Dependent Claims [R-07.2015]

If an unamended base patent claim (i.e., a claimappearing in the patent) has been rejected orcanceled, any claim undergoing reexamination whichis directly or indirectly dependent thereon should beindicated as patentable if it is otherwise patentable.The dependent claim should not be objected to norrejected merely because it depends upon a rejectedor canceled original patent claim. No requirementshould be made for rewriting the dependent claimin independent form. As the original patent claimnumbers are not changed in a reexaminationproceeding, the content of the canceled base claimwould remain in the printed patent and would beavailable to be read as a part of the dependent claim.

If a new base claim has been canceled in areexamination proceeding, a claim which dependsthereon should be rejected as indefinite. If an amended base patent claim or a new base claim isrejected, a claim dependent thereon should beobjected to if it is otherwise patentable, and arequirement should be made for rewriting thedependent claim in independent form.

2661 Special Status for Action [R-07.2015]

35 U.S.C. 314 Special Status For Action

[Editor Note: Applicable only to a request for inter partesreexamination filed prior to September 16, 2012]

*****


In view of the requirement for “special dispatch,”all reexamination proceedings will be “special”throughout their pendency in the Office. In order tofurther the requirement for special dispatch, theexaminer’s first Office action on the merits in an inter partes reexamination should ordinarily bemailed together with the order for reexamination.See MPEP § 2660.

Any cases involved in litigation, whether they arereexamination proceedings or reissue applications,will have priority over all other cases. Reexaminationproceedings not involved in litigation will havepriority over all other cases except forreexaminations or reissues involved in litigation.

2662 Time for Response and Comments[R-07.2015]

The time periods for response and comments for thevarious stages of an inter partes reexaminationproceeding are as follows:

(A) After an Office action that is not an ActionClosing Prosecution (non-ACP Office action).

(1) Patent owner may file a patent owner’sresponse within the time for response set in thenon-ACP Office action. The time period set forresponse will normally be two (2) months from themailing date of the action.

(2) Where patent owner files a timelyresponse to the non-ACP Office action, the thirdparty requester may once file written commentsaddressing issues raised by the Office action or bythe patent owner response to the action. The thirdparty requester’s written comments must besubmitted within thirty days from the date of serviceof the patent owner’s response on the third party

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requester. The date of service can be found on theCertificate of Service that accompanies the patentowner’s response.

(B) After an Office letter indicating that aresponse by the patent owner is not proper.

After an Office letter indicates that aresponse filed by the patent owner is not completelyresponsive to a prior Office action (i.e., anincomplete response), the patent owner is requiredto complete the response within the time period setin the Office letter. 37 CFR 1.957(d). A time periodof 30 days or one month (whichever is longer) isnormally set. Any third party requester commentson a supplemental patent owner response thatcompletes the initial response must be filed within30 days from the date of service of the patentowner’s supplemental response on the third partyrequester, except as provided in MPEP §§ 2666.40and 2666.60 .

(C) After an Action Closing Prosecution (ACP).

The patent owner may once file writtencomments and/or present a proposed amendment tothe claims within the time period set in the ACP. 37CFR 1.951(a). Normally, the ACP will set a periodof 30 days or one month (whichever is longer) fromthe mailing date of the ACP. Where the patent ownerfiles comments and/or a proposed amendment, thethird party requester may once file commentsresponsive to the patent owner’s submission within30 days from the date of service of the patentowner’s submission on the third party requester. 37CFR 1.951(b).

(D) Appeal to the Board after the examinerissues Right of Appeal Notice.

(1) After the examiner issues a Right ofAppeal Notice (RAN), the patent owner and the thirdparty requester may each file a notice of appealwithin 30 days or one month (whichever is longer)from the mailing date of the RAN. 37 CFR 1.953(c).The time for filing a notice of appeal cannot beextended. 37 CFR 41.61(e).

(2) A patent owner who has not filed a timelynotice of appeal may file a notice of cross appeal(with respect to any decision adverse to thepatentability of any claim) within fourteen days ofservice of a third party requester’s notice of appeal.37 CFR 41.61(b)(1).

A third party requester who has not filed a timelynotice of appeal may file a notice of cross appeal(with respect to any final decision favorable to thepatentability of any claim) within fourteen days ofservice of a patent owner’s notice of appeal. 37 CFR41.61(b)(2).

The time for filing a notice of cross-appeal cannotbe extended. 37 CFR 41.61(e).

(E) After an Office notification of defectivenotice of appeal or notice of cross appeal (to theBoard).

A party who is notified of a defective noticeof appeal, or defective notice of cross appeal, mustcure the defect within one month from the mail dateof the Office letter notifying the party. (FormPTOL-2067 should be used to notify the parties.)

The time for curing a defective notice ofappeal or cross-appeal cannot be extended, since thepaper curing the defect is in-effect a substitute noticeof appeal or cross-appeal.

(F) Filing of briefs after notice of appeal ornotice of cross appeal (to the Board).

(1) Each party that filed a notice of appealor notice of cross appeal may file an appellant briefand fee within two months after the last-filed noticeof appeal or cross appeal. Additionally, if any partyto the reexamination is entitled to file an appeal orcross appeal but fails to timely do so, the appellantbrief and fee may be filed within two months afterthe expiration of time for filing (by the last partyentitled to do so) of the notice of appeal or crossappeal. 37 CFR 41.66(a). See also MPEP § 2674 etseq.

(2) Once an appellant brief has been properlyfiled, an opposing party may file a respondent briefand fee within one month from the date of serviceof the appellant brief. 37 CFR 41.66(b).

(3) The times for filing appellant andrespondent briefs may not be extended. 37 CFR41.66(a) and (b).

(G) After an Office notification ofnon-compliance of appellant brief or respondentbrief.

A party who is notified of non-complianceof an appellant brief or respondent brief must file anamended brief within a non-extendable time period

2600-66Rev. 10.2019, June 2020


of one month from the date of the Office letternotifying the party of the non-compliance of thebrief.

(H) Rebuttal brief after the examiner issues anexaminer’s answer.

A third-party requester appellant and/or apatent owner appellant may each file a rebuttal briefwithin one month of the date of the examiner’sanswer. The time for filing a rebuttal brief may notbe extended. 37 CFR 41.66(d).

(I) Oral Hearing.

If an appellant or a respondent (who hasfiled a respondent brief) desires an oral hearing bythe Board, he or she must file a written request foran oral hearing accompanied by the fee set forth in37 CFR 41.20(b)(3) within two months after the dateof the examiner’s answer. The time for filing arequest for oral hearing may not be extended. 37CFR 41.73(b).

(J) Appeal to Court.

The time for the patent owner and/or thethird party requester to file a notice of appeal to theU.S. Court of Appeals for the Federal Circuit is twomonths from the date of the Board decision. If atimely request for rehearing (37 CFR 41.79) is filed,the time for the patent owner and/or the third partyrequester to file a notice of appeal to the FederalCircuit is two months from final Board action on therequest for rehearing. 37 CFR 1.304(a)(1).

(K) Extensions of Time.

See MPEP § 2665 as to extensions of timein inter partes reexamination.

(L) Litigation.

Where litigation is stayed for purposes ofreexamination, the shortened statutory period willgenerally be set at one month or thirty days,whichever is longer. See MPEP § 2686.04.

2663 [Reserved]

2664 Mailing of Office Action [R-07.2015]

After an Office action is completed and processedand has been approved by the Central ReexaminationUnit (CRU) Supervisory Patent Reexamination

Specialist (SPRS) or Technology Center (TC)Quality Assurance Specialist (QAS), the action ismailed. In conjunction with mailing, any appropriateprocessing (e.g., PALM work, update scanning) iscarried out.

Inter partes reexamination forms are structured sothat the identifying information for the reexaminationfile and the correspondence address for the patentowner, which is the official correspondence addressof record in the file of the patent requested to bereexamined, can be printed on the forms. Usually,the official correspondence address of the patentowner, which is of record in the file of the patent, isthe mailing address of patent owner’s legalrepresentative. If there is no official correspondenceaddress of record in the patent file, the Office maytreat the mailing address of the patent owner as thecorrespondence address. Where there are multiplepatent owners, the Office may treat the mailingaddress of the first named patent owner of recordwith the Office as the correspondence address of thepatent owner. The Office will not engage in doublecorrespondence with more than one patent owner.See, e.g., 37 CFR 1.33(a). Copies of Office actionsmay be obtained by accessing Public PAIR at theOffice’s website www.uspto.gov.

All actions in an inter partes reexaminationproceeding will have a copy mailed to the third partyrequester. A transmittal form PTOL-2070 must beused in providing the third party requester with acopy of each Office action. If there is more than onethird party requester, and if the third party requesterhas not designated the mailing address of a registeredpatent practitioner as the correspondence addressfor the requester, the Office may treat the mailingaddress of the first named third party requester asthe correspondence address for the requester.

A completed transmittal form will be provided foreach requester (there can be multiple requesters ina merged reexamination proceeding; see MPEP §2686.01), and the appropriate address will be enteredon the transmittal form(s). The number of transmittalforms provides a ready reference for the number ofcopies of each Office action to be made, and thetransmittal form permits use of the windowenvelopes in mailing the copies of the action toparties other than the patent owner.

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http://www.uspto.gov

2665 Extension of Time for Patent OwnerResponse [R-07.2015]

37 CFR 1.956 Patent owner extensions of time in inter partesreexamination.

The time for taking any action by a patent owner in an interpartes reexamination proceeding will be extended only forsufficient cause and for a reasonable time specified. Any requestfor such extension must be filed on or before the day on whichaction by the patent owner is due, but in no case will the merefiling of a request effect any extension. Any request for suchextension must be accompanied by the petition set forth in §1.17(g). See § 1.304(a) for extensions of time for filing a noticeof appeal to the U.S. Court of Appeals for the Federal Circuit.

The provisions of 37 CFR 1.136(a) and 1.136(b) areNOT applicable to inter partes reexaminationproceedings under any circumstances. Public Law97-247 amended 35 U.S.C. 41 to authorize theDirector of the USPTO to provide for extensions oftime to take action which do not require a reason forthe extension of time in an “application.” An interpartes reexamination proceeding does not involvean “application.” The provisions of 37 CFR 1.136authorize extensions of the time period only in anapplication in which an applicant must respond ortake action. There is neither an “application,” noran “applicant” involved in an inter partesreexamination proceeding.

The times for filing a notice of appeal orcross-appeal, an appellant brief, a respondent brief,submissions curing a defective appeal or brief, arebuttal brief, and a request for oral hearing cannotbe extended.

A request for an extension of time for filing anappeal to the U.S. Court of Appeals for the FederalCircuit is governed by 37 CFR 1.304(a). A requestfor an extension of time to petition from the denialof a request for reexamination can be obtained onlyby filing a grantable petition under 37 CFR 1.183(with fee) to waive the time provisions of 37 CFR1.927.

Extensions of time in an inter partes reexaminationproceeding are otherwise governed by 37 CFR 1.956.It should be noted that extensions of time under37 CFR 1.956 are not available to the third partyrequester.

An extension of time in an inter partes reexamination proceeding is requested, whereapplicable, pursuant to 37 CFR 1.956. Any requestfor extension of time pursuant to 37 CFR 1.956 willbe decided by the Central Reexamination Unit(CRU) Director or SPRS. The request (A) must befiled on or before the day on which action by thepatent owner is due, (B) must set forth sufficientcause for the extension, and (C) must beaccompanied by the petition fee set forth in 37 CFR1.17(g).

Requests for an extension of time in an inter partesreexamination proceeding will be considered onlyafter the first Office action on the merits in thereexamination is mailed. Any request for anextension of time filed prior to the first action willbe denied.

The certificate of mailing and the certificate oftransmission procedures (37 CFR 1.8), and thePriority Mail Express® mailing procedure (37 CFR1.10), may be used to file a request for extension oftime, as well as any other paper in an existing interpartes reexamination proceeding (see MPEP § 2666).

As noted above, a request for extension of time under37 CFR 1.956 will be granted only for sufficientcause, and the request must be filed on or beforethe day on which action by the patent owner is due.In no case, will the mere filing of a request forextension of time automatically effect any extension,because the showing of cause may be insufficientor incomplete. In the prosecution of an ex partereexamination, an automatic two-month extensionof time to take further action is granted upon filinga first timely response to a final Office action (seeMPEP § 2272). The automatic extension given in ex parte reexamination does not apply to the firstresponse to an Action Closing Prosecution (ACP)in an inter partes reexamination. The reason is thatin inter partes reexamination, parties do not file anappeal in response to an ACP, and a further Officeaction (Right of Appeal Notice) will issue even ifthe parties make no response at all. Thus, there is notime period to appeal running against the partiesafter the ACP is issued, unlike ex partereexamination where an appeal is due after finalrejection and the time is thus automatically extendedtwo months to provide time for the patent owner to

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review the Office’s response to the amendmentbefore deciding whether to appeal.

Evaluation of whether “sufficient cause” has beenshown for an extension must be made by balancingthe desire to provide the patent owner with a fairopportunity to respond, against the requirement ofthe statute, 35 U.S.C. 314(c), that the proceedingsbe conducted with special dispatch.

Any request for an extension of time in areexamination proceeding must fully state thereasons therefor. The reasons must include (A) astatement of what action the patent owner has takento provide a response, to date as of the date therequest for extension is submitted, and (B) why, inspite of the action taken thus far, the requestedadditional time is needed. The statement of (A) mustprovide a factual accounting of reasonably diligentbehavior by all those responsible for preparing aresponse to the outstanding Office action within thestatutory time period.

Prosecution will be conducted by initially setting atime period of at least 30 days or one month(whichever is longer), see MPEP § 2662. Firstrequests for extensions of these time periods will begranted for sufficient cause, and for a reasonabletime specified-usually one month. The reasons statedin the request will be evaluated, and the request willbe favorably considered where there is a factualaccounting of reasonably diligent behavior by allthose responsible for preparing a response orcomments within the statutory time period. Secondor subsequent requests for extensions of time, orrequests for more than one month, will be grantedonly in extraordinary situations.

EXTENSIONS OF TIME TO SUBMIT AFFIDAVITSAFTER ACTION CLOSING PROSECUTION

Frequently, a request for an extension of time ismade, stating as a reason therefor, that more time isneeded in which to submit an affidavit. When sucha request is filed after an ACP, the granting of therequest for extension of time is without prejudice tothe right of the examiner to question why theaffidavit is now necessary and why it was not earlierpresented. If the showing by the patent owner isinsufficient, the examiner may deny entry of the

affidavit, notwithstanding the previous grant of anextension of time to submit it. The grant of anextension of time in these circumstances servesmerely to give the patent owner an extendedopportunity to present the affidavit or to take otherappropriate action.

Affidavits submitted after an ACP are subject to thesame treatment as amendments submitted after anACP. This is analogous to the treatment of affidavitssubmitted after a final rejection in an application.See In re Affidavit Filed After Final Rejection, 152USPQ 292, 1966 C.D. 53 (Comm’r Pat. 1966).

2666 Patent Owner Response to OfficeAction [R-07.2015]

37 CFR 1.111 Reply by applicant or patent owner to anon-final Office action.

(a)(1) If the Office action after the first examination(§ 1.104) is adverse in any respect, the applicant or patent owner,if he or she persists in his or her application for a patent orreexamination proceeding, must reply and requestreconsideration or further examination, with or withoutamendment. See §§ 1.135 and 1.136 for time for reply to avoidabandonment.

(a)(2) Supplemental replies.

(i) A reply that is supplemental to a reply that isin compliance with § 1.111(b) will not be entered as a matterof right except as provided in paragraph (a)(2)(ii) of this section.The Office may enter a supplemental reply if the supplementalreply is clearly limited to:

(A) Cancellation of a claim(s);

(B) Adoption of the examiner suggestion(s);

(C) Placement of the application in conditionfor allowance;

(D) Reply to an Office requirement made afterthe first reply was filed;

(E) Correction of informalities (e.g.,typographical errors); or

(F) Simplification of issues for appeal.

(ii) A supplemental reply will be entered if thesupplemental reply is filed within the period during which actionby the Office is suspended under § 1.103(a) or (c).

(b) In order to be entitled to reconsideration or furtherexamination, the applicant or patent owner must reply to theOffice action. The reply by the applicant or patent owner mustbe reduced to a writing which distinctly and specifically pointsout the supposed errors in the examiner’s action and must replyto every ground of objection and rejection in the prior Officeaction. The reply must present arguments pointing out thespecific distinctions believed to render the claims, includingany newly presented claims, patentable over any applied

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references. If the reply is with respect to an application, a requestmay be made that objections or requirements as to form notnecessary to further consideration of the claims be held inabeyance until allowable subject matter is indicated. Theapplicant’s or patent owner’s reply must appear throughout tobe a bona fide attempt to advance the application or thereexamination proceeding to final action. A general allegationthat the claims define a patentable invention without specificallypointing out how the language of the claims patentablydistinguishes them from the references does not comply withthe requirements of this section.

(c) In amending in reply to a rejection of claims in anapplication or patent under reexamination, the applicant or patentowner must clearly point out the patentable novelty which heor she thinks the claims present in view of the state of the artdisclosed by the references cited or the objections made. Theapplicant or patent owner must also show how the amendmentsavoid such references or objections.

37 CFR 1.945 Response to Office action by patent owner ininter partes reexamination.

(a) The patent owner will be given at least thirty days tofile a response to any Office action on the merits of the interpartes reexamination.

(b) Any supplemental response to the Office action will beentered only where the supplemental response is accompaniedby a showing of sufficient cause why the supplemental responseshould be entered. The showing of sufficient cause must include:

(1) An explanation of how the requirements of §1.111(a)(2)(i) are satisfied;

(2) An explanation of why the supplemental responsewas not presented together with the original response to theOffice action; and

(3) A compelling reason to enter the supplementalresponse.

I. SUBSTANCE OF THE RESPONSE

Pursuant to 37 CFR 1.937(b):

“The inter partes reexamination proceedingwill be conducted in accordance with §§ 1.104through 1.116, the sections governing theapplication examination process…”

Accordingly, the provisions of 37 CFR 1.111 , otherthan the provision in 37 CFR 1.111(a)(1) to “see . .. [37 CFR] 1.136 for time for reply to avoidabandonment”, apply to the response by a patentowner in a reexamination proceeding.

The patent owner may request reconsideration ofthe position stated in the Office action, with orwithout amendment to the claims and/or

specification. As to amendments in reexaminationproceedings, see MPEP § 2666.01.

Any request for reconsideration must be in writingand must distinctly and specifically point out eachsupposed error in the examiner’s action. A generalallegation that the claims define a patentableinvention, without specifically pointing out how thelanguage of the claims patentably distinguishes themover the references, is inadequate and is not incompliance with 37 CFR 1.111(b).

Reasons must be given as to how and why the claimsdefine over the references, and why any rejectionsmade under 35 U.S.C. 112 are incorrect orinapplicable.

Affidavits under 37 CFR 1.131(a) and 1.132 maybe utilized in a reexamination proceeding. Note,however, that an affidavit under 37 CFR 1.131(a)may not be used to “swear behind” a reference patentif the reference patent is claiming the same inventionas the patent undergoing reexamination. In such asituation, the patent owner may, if appropriate, seekto raise this issue via an affidavit under 37 CFR1.131(c) (see MPEP § 718) or in an interferenceproceeding via an appropriate reissue application ifsuch a reissue application may be filed (see MPEP§ 1449.02).

The patent owner cannot file papers on behalf of athird party. If a third party paper accompanies or issubmitted as part of a timely filed response, theresponse and third party paper are considered to bean improper (i.e., informal) submission, and theentire submission shall be returned to the patentowner since the Office will not determine whichportion of the submission is the third party paper.The third party paper filed as part of the patentowner’s response will not be considered. Theimproper response with the third party paper in itshould be returned to patent owner as a defective(informal) response, using form PTOL-2069 as thecover letter. See MPEP § 2666.50. The appropriatebox on the form should be checked and anexplanation for the return of the paper given. Thepatent owner should be provided an appropriateperiod of time to refile the patent owner responsewithout the third party paper.

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II. PROCEDURAL CONSIDERATIONS OF THERESPONSE

The certificate of mailing and the certificate oftransmission procedures (37 CFR 1.8), and thePriority Mail Express® mailing procedure (37 CFR1.10), may be used to file a patent owner’s response,as well as any other paper in an existing inter partesreexamination proceeding.

A copy of the response must be served on the thirdparty requester in accordance with 37 CFR 1.248, -see also MPEP § 2666.06. Lack of service poses aproblem, since a third party requester must filewritten comments within a period of 30 days fromthe date of service of the patent owner’s response,in order to be timely. Where the record does notshow the response to have been served on the thirdparty requester, see MPEP § 2666.06.

The patent owner will normally be given a periodof two months to respond to an Office action. Anextension of time can be obtained only in accordancewith 37 CFR 1.956. Note that 37 CFR 1.136 doesnot apply in reexamination proceedings.

See MPEP § 2666.10 for the consequences of thefailure by the patent owner to respond to the Officeaction.

III. SUPPLEMENTAL RESPONSE TO OFFICEACTION

Pursuant to 37 CFR 1.945(b), any supplementalresponse to the Office action in an inter partesreexamination proceeding must be accompanied bya showing of sufficient cause why the supplementalresponse should be entered. If such a showing is notprovided, the supplemental response will not beentered, and may be sealed (i.e., closed) from publicview in the Image File Wrapper (IFW), if it hasalready been scanned into the IFW for theproceeding.

The showing of sufficient cause why thesupplemental response should be entered mustinclude:

(A) an explanation of how the requirements of37 CFR 1.111(a)(2)(i) are satisfied;

(B) an explanation of why the supplementalresponse was not presented together with the originalresponse to the Office action; and

(C) a compelling reason to enter thesupplemental response.

Pursuant to 37 CFR 1.111(a)(2)(i), the Office mayenter a supplemental response if the supplementalresponse is clearly limited to: (1) cancellation of aclaim(s); (2) adoption of the examiner suggestion(s);(3) placement of the proceeding in condition forNotice of Intent to Issue Reexamination Certificate(NIRC); (4) a response to an Office requirementmade after the first response was filed; (5) correctionof informalities (e.g., typographical errors); or (6)simplification of issues for appeal.

In some instances, where there is a clear basis forthe supplemental response, the three-prong showingmay be easily satisfied. Thus, for example, the patentclaim text may have been incorrectly reproduced,where a patent claim is amended in the originalresponse. In such an instance, the patent owner needonly point to the provision of 37 CFR1.111(a)(2)(i)(E) for the correction of theinformalities (e.g., typographical errors), and statethat the incorrect reproduction of the claim was notnoted in the preparation of the original response.The compelling reason to enter the supplementalresponse is implicit in such a statement, as the recordfor the proceeding certainly must be corrected as tothe incorrect reproduction of the claim.

Any requester comments filed after a patent ownerresponse to an Office action must be filed “within30 days after the date of service of the patent owner’sresponse,” to satisfy 35 U.S.C. 314(b)(2). Thus,where the patent owner files a supplemental responseto an Office action, the requester would be welladvised to file any comments deemed appropriatewithin 30 days after the date of service of the patentowner’s supplemental response to preserverequester’s comment right, in the event the Officeexercises its discretion to enter the supplementalresponse. The requester’s comments may addresswhether the patent owner showing is adequate, inaddition to addressing the merits of the supplementalresponse. If the patent owner’s supplementalresponse is not entered by the Office, then both thesupplemental response, and any comments following

Rev. 10.2019, June 20202600-71


that supplemental response, will either be returnedto the parties or discarded at the sole discretion ofthe Office. If the supplemental response and/orcomments were scanned into the IFW for thereexamination proceeding, and thus, the paperscannot be physically returned or discarded, then thesupplemental response and/or comments entries willbe marked “closed” and “non-public,” and they willnot constitute part of the record of the reexaminationproceeding. Such papers will not be displayed in theOffice’s image file wrapper that is made availableto the public, patent owners, and representatives ofpatent owners, i.e., they will not be displayed in thePatent Application Information Retrieval (PAIR) atthe Office’s website.

A supplemental response, which has not beenapproved for entry, will not be entered when aresponse to a subsequent Office action is filed, evenif a specific request for its entry is made in thesubsequent response. If a patent owner wishes tohave the unentered supplemental response consideredby the examiner, the patent owner must include thecontents of the unentered supplemental response ina proper response to a subsequent Office action. Ifthe next Office action is an Action ClosingProsecution under 37 CFR 1.949, or an action thatotherwise closes prosecution, the entry of theresponse is governed by 37 CFR 1.116 (see 37 CFR1.951(a)).

Patent owner cannot submit an application data sheet(ADS) in a reexamination proceeding except asprovided in MPEP § 2258.02.

2666.01 Amendment by Patent Owner[R-10.2019]

37 CFR 1.941 Amendments by patent owner in inter partesreexamination.

Amendments by patent owner in inter partes reexaminationproceedings are made by filing a paper in compliance with §§1.530(d)-(k) and 1.943.

37 CFR 1.121 Manner of making amendments inapplications.

*****

(j) Amendments in reexamination proceedings. Anyproposed amendment to the description and claims in patentsinvolved in reexamination proceedings must be made inaccordance with § 1.530.

*****

37 CFR 1.530 Statement by patent owner in ex partereexamination; amendment by patent owner in ex parte orinter partes reexamination; inventorship change in ex parteor inter partes reexamination.

*****

(d) Making amendments in a reexamination proceeding. A proposed amendment in an ex parte or an inter partes reexamination proceeding is made by filing a paper directingthat proposed specified changes be made to the patentspecification, including the claims, or to the drawings. Anamendment paper directing that proposed specified changes bemade in a reexamination proceeding may be submitted as anaccompaniment to a request filed by the patent owner inaccordance with § 1.510(e), as part of a patent owner statementin accordance with paragraph (b) of this section, or, wherepermitted, during the prosecution of the reexaminationproceeding pursuant to § 1.550(a) or § 1.937.

(1) Specification other than the claims. Changes tothe specification, other than to the claims, must be made bysubmission of the entire text of an added or rewritten paragraphincluding markings pursuant to paragraph (f) of this section,except that an entire paragraph may be deleted by a statementdeleting the paragraph, without presentation of the text of theparagraph. The precise point in the specification must beidentified where any added or rewritten paragraph is located.This paragraph applies whether the amendment is submitted onpaper or compact disc (see §§ 1.96 and 1.825).

(2) Claims. An amendment paper must include theentire text of each patent claim which is being proposed to bechanged by such amendment paper and of each new claim beingproposed to be added by such amendment paper. For any claimchanged by the amendment paper, a parenthetical expression“amended,” “twice amended,” etc., should follow the claimnumber. Each patent claim proposed to be changed and eachproposed added claim must include markings pursuant toparagraph (f) of this section, except that a patent claim orproposed added claim should be canceled by a statementcanceling the claim, without presentation of the text of the claim.

(3) Drawings. Any change to the patent drawings mustbe submitted as a sketch on a separate paper showing theproposed changes in red for approval by the examiner. Uponapproval of the changes by the examiner, only new sheets ofdrawings including the changes and in compliance with § 1.84must be filed. Amended figures must be identified as“Amended,” and any added figure must be identified as “New.”In the event a figure is canceled, the figure must be surroundedby brackets and identified as “Canceled.”

(4) The formal requirements for papers making up thereexamination proceeding other than those set forth in thissection are set out in § 1.52.

(e) Status of claims and support for claim changes.Whenever there is an amendment to the claims pursuant toparagraph (d) of this section, there must also be supplied, onpages separate from the pages containing the changes, the status(i.e., pending or canceled), as of the date of the amendment, ofall patent claims and of all added claims, and an explanation ofthe support in the disclosure of the patent for the changes to theclaims made by the amendment paper.

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(f) Changes shown by markings. Any changes relative tothe patent being reexamined which are made to the specification,including the claims, must include the following markings:

(1) The matter to be omitted by the reexaminationproceeding must be enclosed in brackets; and

(2) The matter to be added by the reexaminationproceeding must be underlined.

(g) Numbering of patent claims perserved. Patent claimsmay not be renumbered. The numbering of any claims addedin the reexamination proceeding must follow the number of thehighest numbered patent claim.

(h) Amendment of disclosure may be required. Thedisclosure must be amended, when required by the Office, tocorrect inaccuracies of description and definition, and to securesubstantial correspondence between the claims, the remainderof the specification, and the drawings.

(i) Amendments made relative to patent. All amendmentsmust be made relative to the patent specification, including theclaims, and drawings, which are in effect as of the date of filingthe request for reexamination.

(j) No enlargement of claim scope. No amendment mayenlarge the scope of the claims of the patent or introduce newmatter. No amendment may be proposed for entry in an expiredpatent. Moreover, no amendment, other than the cancellationof claims, will be incorporated into the patent by a certificateissued after the expiration of the patent.

(k) Amendments not effective until certificate. Althoughthe Office actions will treat proposed amendments as thoughthey have been entered, the proposed amendments will not beeffective until the reexamination certificate is issued andpublished.

(l) Correction of inventorship in an ex parte or inter partesreexamination proceeding.

(1) When it appears in a patent being reexamined thatthe correct inventor or inventors were not named, the Directormay, on petition of all the parties set forth in § 1.324(b)(1) and(2), including the assignees, and satisfactory proof of the factsand payment of the fee set forth in § 1.20(b), or on order of acourt before which such matter is called in question, include inthe reexamination certificate to be issued under § 1.570 or§ 1.997 an amendment naming only the actual inventor orinventors. The petition must be submitted as part of thereexamination proceeding and must satisfy the requirements of§ 1.324.

(2) Notwithstanding paragraph (l)(1) of this section, ifa petition to correct inventorship satisfying the requirements of§ 1.324 is filed in a reexamination proceeding, and thereexamination proceeding is concluded other than by areexamination certificate under § 1.570 or § 1.997, a certificateof correction indicating the change of inventorship stated in thepetition will be issued upon request by the patentee.

Amendments to the patent being reexamined (wherethe patent has not expired) may be filed by the patentowner in the reexamination proceeding. Suchamendments may be provided by the patent owners

after the first Office action on the merits has beenissued. The first Office action on the merits willordinarily be mailed with the order. In someinstances, however, it may not be practical orpossible to mail the first Office action together withthe order. In the event that the first Office action ismailed after the order, it would not be proper toprovide an amendment prior to the first Office action.Such an amendment would not be considered, andit would be returned to the patent owner as animproper paper. See MPEP § 2667.

If an amendment is submitted to add claims to thepatent being reexamined (i.e., to provide newclaims), then excess claims fees pursuant to 37 CFR1.20(c)(3) and (c)(4) may be applicable to thepresentation of the added claims. See MPEP §2666.04. Amendments proposed in a reexaminationwill normally be entered if timely, and will beconsidered to be entered for purposes of prosecutionbefore the Office (if they are timely and comply withthe rules); however, amendments do not becomeeffective in the patent until the certificate under 35U.S.C. 316 is issued and published.

Amendments must not enlarge the scope of a claimof the patent nor introduce new matter. Amended ornew claims which broaden or enlarge the scope ofa claim of the patent should be rejected under 35U.S.C. 314(a). The test for when an amended or“new claim enlarges the scope of an original claimunder 35 U.S.C. 314(a) is the same as that under the2-year limitation for reissue applications addingenlarging claims under 35 U.S.C. 251, lastparagraph.” In re Freeman, 30 F.3d 1459, 1464, 31USPQ2d 1444, 1447 (Fed. Cir. 1994). See MPEP §2658 for a discussion of enlargement of the claimscope. For handling of new matter, see MPEP §2670.

If the patent expires during the reexaminationprocedure, and the patent claims have been amended,the Office will hold the amendments as beingimproper and all subsequent reexamination will beon the basis of the unamended patent claims. Thisprocedure is necessary since no amendments will beincorporated into the patent by certificate after theexpiration of the patent. See 37 CFR 1.941 and 37CFR 1.530(j). The patent expiration date for a utilitypatent, for example, is determined by taking into

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account the term of the patent, whether maintenancefees have been paid for the patent, whether anydisclaimer was filed as to the patent to shorten itsterm, any patent term extensions or adjustments fordelays within the USPTO under 35 U.S.C. 154 (seeMPEP § 2710, et seq.), and any patent termextensions available under 35 U.S.C. 156 forpremarket regulatory review (see MPEP § 2750 et.seq.). Any other relevant information should also betaken into account.

Once the patent expires, a narrow claim constructionis applied. See MPEP § 2258, subsection I.G. “ClaimInterpretation and Treatment.”

Amendment Entry - Amendments which complywith 37 CFR 1.530(d)-(j) and 37 CFR 1.943 (andare formally presented pursuant to 37 CFR 1.52(a)and (b), and contain fees required by 37 CFR1.20(c)) will be entered in the reexamination filepursuant to the guidelines set forth in MPEP § 2234.

Manner of Making Amendments - Amendments inan inter partes reexamination proceeding are madein the same manner that amendments in an ex partereexamination proceeding are made. See MPEP§ 2250 for guidance as to the manner of makingamendments in a reexamination proceeding.

Form paragraph 22.12 may be used to advise thepatent owner of the proper manner of makingamendments in an inter partes reexaminationproceeding.

¶ 22.12 Amendments Proposed in a Reexamination - 37CFR 1.530(d)-(j)

Patent owner is notified that any proposed amendment to thespecification and/or claims in this reexamination proceedingmust comply with 37 CFR 1.530(d)-(j), must be formallypresented pursuant to 37 CFR 1.52(a) and (b), and must containany fees required by 37 CFR 1.20(c).

Examiner Note:

This paragraph may be used in the order granting reexaminationand/or in the first Office action to advise patent owner of theproper manner of making amendments in a reexaminationproceeding.

Form paragraph 26.05.01 may be used to notifypatent owner in an inter partes reexaminationproceeding that a proposed amendment in the

proceeding does not comply with 37 CFR1.530(d)-(j).

¶ 26.05.01 Improper Amendment in an Inter PartesReexamination - 37 CFR 1.530(d)-(j)

The amendment filed [1] proposes amendments to [2] that donot comply with 37 CFR 1.530(d)-(j), which sets forth themanner of making amendments in reexamination proceedings.A supplemental paper correctly proposing amendments in thepresent inter partes reexamination proceeding is required.

A shortened statutory period for response to this letter is set toexpire ONE MONTH or THIRTY DAYS, whichever is longer,from the mailing date of this letter. If the patent owner fails totimely correct this informality, the amendment will be held notto be an appropriate response, and the consequences set forthin 37 CFR 1.957(b) or (c) will result. See MPEP § 2666.10

Examiner Note:

This paragraph may be used for any 37 CFR 1.530(d)-(j)informality as to a proposed amendment submitted in areexamination proceeding.

The cover sheet to be used for mailing thenotification to the patent owner will be PTOL-2069.

As an alternative to using form paragraph 26.05.01,it would also be appropriate to use form PTOL-2069,box 4.

For clerical handling of amendments, see MPEP§ 2670. For entry of an amendment in a mergedreexamination proceeding, see MPEP §§ 2686.01and 2686.03. For handling of a dependent claim inreexamination proceedings, see MPEP § 2660.03.

2666.02 Correction of Patent Drawings[R-11.2013]

37 CFR 1.941 Amendments by patent owner in inter partesreexamination.

Amendments by patent owner in inter partes reexaminationproceedings are made by filing a paper in compliance with §§1.530(d)-(k) and 1.943.

37 CFR 1.530 Statement by patent owner in ex partereexamination; amendment by patent owner in ex parte orinter partes reexamination; inventorship change in ex parteor inter partes reexamination.

*****

(d) Making amendments in a reexamination proceeding. A proposed amendment in an ex parte or an inter partes reexamination proceeding is made by filing a paper directingthat proposed specified changes be made to the patentspecification, including the claims, or to the drawings. An

2600-74Rev. 10.2019, June 2020


amendment paper directing that proposed specified changes bemade in a reexamination proceeding may be submitted as anaccompaniment to a request filed by the patent owner inaccordance with § 1.510(e), as part of a patent owner statementin accordance with paragraph (b) of this section, or, wherepermitted, during the prosecution of the reexaminationproceeding pursuant to § 1.550(a) or § 1.937.

*****

(3) Drawings. Any change to the patent drawings mustbe submitted as a sketch on a separate paper showing theproposed changes in red for approval by the examiner. Uponapproval of the changes by the examiner, only new sheets ofdrawings including the changes and in compliance with § 1.84must be filed. Amended figures must be identified as“Amended,” and any added figure must be identified as “New.”In the event a figure is canceled, the figure must be surroundedby brackets and identified as “Canceled.”

*****

In the reexamination proceeding, the copy of thepatent drawings submitted pursuant to 37 CFR1.915(b)(5) will be used for reexamination purposes,provided no change is made to the drawings. If thereis any change in the drawings, a new sheet ofdrawing for each sheet changed must be submitted.The change may not be made on the original patentdrawings. Drawing changes in an inter partes reexamination proceeding are made in the samemanner that drawing changes in an ex parte reexamination proceeding are made. 37 CFR1.530(d)(3) sets forth the manner of makingamendments to the drawings. Any amended figure(s)must be identified as “Amended” and any addedfigure(s) must be identified as “New.” In the eventa figure is canceled, the figure must be surroundedby brackets and identified as “Canceled.”

Where the patent owner wishes to change/amendthe drawings, the patent owner should submit asketch in permanent ink showing the proposedchange(s)/amendment(s), for approval by theexaminer. The submitted sketch should be presentedas a separate paper, which is clearly labeled as“Annotated Sheet,” and it will be made part of therecord. Once the proposed changes are approved,sheets of substitute or new drawings must besubmitted for each drawing sheet that is to bechanged/amended. If a new drawing sheet containsmultiple figures, each figure must be marked as“amended” or “new,” if applicable, to comply withthe requirements of 37 CFR 1.530(d)(3). Forexample, if the new drawing sheet contains Figures1-3 but only Figure 2 is amended, the new drawing

sheet must identify Figure 2 as “Amended.” It is notsufficient to generally indicate that the entire sheetis amended by, e.g., placing the term “Amended” inthe header of the drawing sheet. The new sheets ofdrawings should be entered in the reexaminationfile.

2666.03 Correction of Inventorship[R-08.2012]

Correction of inventorship in an inter partesreexamination proceeding is effected in the samemanner that correction of inventorship in an ex partereexamination proceeding is effected. See MPEP §2250.02 for the manner of correcting inventorshipin both inter partes and ex parte reexaminationproceedings.

2666.04 Fees for Adding Claims [R-10.2019]

37 CFR 1.20 Post issuance fees*****

(c) In reexamination proceedings:

*****

(3) For filing with a request for reexamination or laterpresentation at any other time of each claim in independent formin excess of three and also in excess of the number of claims inindependent form in the patent under reexamination:

By a micro entity (§ 1.29).........................$115.00

By a small entity (§ 1.27(a)).......................$230.00

By other than a small entity .......................$460.00

(4) For filing with a request for reexamination or laterpresentation at any other time of each claim (whether dependentor independent) in excess of 20 and also in excess of the numberof claims in the patent under reexamination (note that § 1.75(c)indicates how multiple dependent claims are considered for feecalculation purposes):

By a micro entity (§ 1.29)..........................$25.00

By a small entity (§ 1.27(a))........................$50.00

By other than a small entity ......................$100.00

(5) If the excess claims fees required by paragraphs(c)(3) and (4) of this section are not paid with the request forreexamination or on later presentation of the claims for whichthe excess claims fees are due, the fees required by paragraphs(c)(3) and (4) must be paid or the claims canceled by amendmentprior to the expiration of the time period set for reply by theOffice in any notice of fee deficiency in order to avoidabandonment.

*****

Rev. 10.2019, June 20202600-75


Excess claims fees as specified in 35 U.S.C. 41(a)(2)as amended by the Consolidated Appropriations Actof 2005 are applicable to excess claims proposed tobe added to a patent by their presentation during areexamination proceeding. Under “former” 35 U.S.C.41, excess claims fees were included as part of the“application” filing fee under 35 U.S.C. 41(a)(1),and thus did not apply during reexaminationproceedings. The Consolidated Appropriations Actdoes not include the excess claims as part of the“application” filing fee under 35 U.S.C. 41(a)(1),but separately provides for excess claims fees in 35U.S.C. 41(a)(2) (as being in addition to the filing feein 35 U.S.C. 41(a)(1)). 35 U.S.C. 41(a)(2) providesthat an excess claims fee is due “on filing or onpresentation at any other time” (e.g., during areexamination proceeding) of an independent claimin excess of three or of a claim (whether independentor dependent) in excess of twenty.

37 CFR 1.20 was amended, effective December 8,2004, to provide for excess claims fees in areexamination proceeding. The excess claims feesspecified in 37 CFR 1.20(c) apply to all patentseligible for inter partes reexamination. The feesmust be submitted for any excess claims presentedin a reexamination proceeding on or after December8, 2004 (no excess claims fee was due under 35U.S.C. 41 for any claim presented during areexamination proceeding before December 8, 2004).Even though a reexamination proceeding wascommenced prior to December 8, 2004, the excessclaims fees are due for any amendment filed on orafter December 8, 2004.

When a patent owner presents an amendment to theclaims (on or after December 8, 2004) during an inter partes reexamination proceeding, excessclaims fees may be applicable. If the amendment islimited to revising the existing claims, i.e., it doesnot provide any new claim, there is no claim fee.The excess claims fees apply only to the submissionof new, i.e., “excess” claims.

The excess claims fees specified in 37 CFR 1.20(c)apply to excess claims that result from anamendment as follows:

(A) The fee designated in 37 CFR 1.20(c)(3) asthe independent claims fee must be paid for eachindependent claim in excess of three and also in

excess of the number of independent claims in thepatent being reexamined. The amendment mustincrease the number of independent claims to bemore than both of these limits, in order for the“independent excess claims fee” to apply;

(B) The fee designated in 37 CFR 1.20(c)(4) asthe total claims fee must be paid for each claim(whether independent or dependent) in excess oftwenty and also in excess of the number of claimsin the patent being reexamined. The amendmentmust increase the total number of claims to be morethan both of these limits, in order for the “totalexcess claims fee” to apply.

The following examples illustrate theapplication of the excess claims fees in a patent(non-small entity) to be reexamined containing sixindependent claims and thirty total claims:

(A) No excess claims fee is due if the patentowner cancels ten claims, two of which areindependent, and adds ten claims, two of which areindependent.

(B) The 37 CFR 1.20(c)(3) excess independentclaims fee for a seventh independent claim is due ifthe patent owner cancels ten claims, two of whichare independent, and adds ten claims, three of whichare independent.

(C) The 37 CFR 1.20(c)(4) excess total claimsfee for a thirty-first claim is due if the patent ownercancels ten claims, two of which are independent,and adds eleven claims, two of which areindependent.

(D) The 37 CFR 1.20(c)(3) excess independentclaims fee for a seventh independent claim and the37 CFR 1.20(c)(4) excess total claims fee for athirty-first claim are due if the patent owner cancelsten claims, two of which are independent, and addseleven claims, three of which are independent.

A claim that has been disclaimed under 35 U.S.C.253 and 37 CFR 1.321(a) as of the date of filing ofthe request for reexamination is not considered tobe a claim in the patent under reexamination forpurposes of excess claims fee calculations. The sameapplies to a claim canceled via a prior ReexaminationCertificate, reissue patent, or Certificate ofCorrection.

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If the excess claims fees required by 37 CFR1.20(c)(3) and (c)(4) are not paid with thepresentation of the excess claims, a notice of feedeficiency will be issued as a Notice of DefectivePaper In Inter Partes Reexamination, PTOL-2069.A one-month time period will be set in the formPTOL-2069 for correction of the defect, i.e., the feedeficiency. An extension of time to correct the feedeficiency may be requested under 37 CFR 1.956.If the unpaid excess claims fees required by 37 CFR1.20(c)(3) and (c)(4) are not paid within the timeperiod set for response to the Notice, the prosecutionof the reexamination proceeding will be terminatedunder 37 CFR 1.957(b) or limited under 37 CFR1.957(c) (as is appropriate for the particular case),to effect the “abandonment” set forth in 37 CFR1.20(c)(5).

2666.05 Third Party Comments After PatentOwner Response [R-07.2015]

37 CFR 1.947 Comments by third party requester to patentowner’s response in inter partes reexamination.

Each time the patent owner files a response to an Office actionon the merits pursuant to § 1.945, a third party requester mayonce file written comments within a period of 30 days from thedate of service of the patent owner’s response. These commentsshall be limited to issues raised by the Office action or the patentowner’s response. The time for submitting comments by thethird party requester may not be extended. For the purpose offiling the written comments by the third party requester, thecomments will be considered as having been received in theOffice as of the date of deposit specified in the certificate under§ 1.8.

37 CFR 1.948 Limitations on submission of prior art by thirdparty requester following the order for inter partesreexamination.

(a) After the inter partes reexamination order, the thirdparty requester may only cite additional prior art as definedunder § 1.501 if it is filed as part of a comments submissionunder § 1.947 or § 1.951(b) and is limited to prior art:

(1) which is necessary to rebut a finding of fact by theexaminer;

(2) which is necessary to rebut a response of the patentowner; or

(3) which for the first time became known or availableto the third party requester after the filing of the request for inter partes reexamination proceeding. Prior art submitted underparagraph (a)(3) of this section must be accompanied by astatement as to when the prior art first became known oravailable to the third party requester and must include adiscussion of the pertinency of each reference to the patentabilityof at least one claim.

(b) [Reserved]

I. TIMELINESS

A third party requester may once file writtencomments on any patent owner response to an Officeaction, during the examination stage of an interpartes reexamination proceeding. The third partyrequester comments must be filed within a periodof 30 days from the date of service of the patentowner’s response on the third party requester. 37CFR 1.947. The date that the Office receives thepatent owner’s response has no bearing on the timeperiod for which the third party requester must filethe comments.

The certificate of mailing and the certificate oftransmission procedures (37 CFR 1.8), and thePriority Mail Express® mailing procedure (37 CFR1.10), may be used to file comments. Any commentsby the third party requester must be served upon thepatent owner in accordance with 37 CFR 1.248. Seealso MPEP § 2666.06.

If the third party requester comments are filed after30 days from the date of service of the patentowner’s response on the third party requester, thecomments will not be considered. See 37 CFR1.957(a).

The following special circumstance is to be noted.It may happen that a patent owner files a responseto an Office action and the page length of theresponse exceeds the page length set by 37 CFR1.943(b). Accompanying the response is a petitionunder 37 CFR 1.183 requesting waiver of the 37CFR 1.943(b) requirement. Until such a 37 CFR1.183 petition to waive the page length is granted,or a page length compliant response is filed (if the37 CFR 1.183 petition is not granted), the patentowner response is incomplete. Pursuant to MPEP §2666.40, “[a]fter the owner completes the response,the examiner will wait two months from the date ofservice of the patent owner’s completion of theresponse, and then take up the case for action, sincethe 30 days for the third party requester commentson the response as completed will have expired bythat time. The third party requester may filecomments on the response as completed…Theresponse as completed is treated as a new responseon-the-merits to the Office action; thus, the thirdparty requester is entitled to file comments and has

Rev. 10.2019, June 20202600-77


30 days to do so.” Based on the above, at the timethe 37 CFR 1.183 petition is granted, the patentowner response becomes complete with its contentbeing set in place, and the requester has 30 days fromthe date of the decision granting the 37 CFR 1.183petition to file a comment paper pursuant to 37 CFR1.947. However, if the Office finds that patentowner’s response is compliant with the page lengthset by 37 CFR 1.943(b) and that a waiver under 37CFR 1.183 is not necessary, requester will not begranted additional time to submit comments as the30 day time period is set by statute. Therefore,requester is advised to file comments within 30 daysfrom the date of service of patent owner’s responseto preserve their right to comment. If the commentsexceed the page length set by 37 CFR 1.945(b), thenthe comments should be accompanied by a petitionunder 37 CFR 1.183 requesting waiver of the pagelength requirement of 37 CFR 1.948(b) to the extentthat entry of the accompanying comment paper ispermitted. Alternatively, the comments could requestthat if the patent owner’s petition under 37 CFR1.183 is granted, then the accompanying commentsshould not be entered, and the requester’s commentperiod be re-set to run 30 days from the date thepatent owner filed a proper response (e.g., themailing date of the decision granting patent owner’spetition under 37 CFR 1.183 or submission of acorrected response).

When the requester takes issue with the page lengthof the patent owner’s response and the patent ownerhas not filed a petition requesting waiver of the pagelength requirement, the requester may file a 37 CFR1.181 petition to expunge an improper paper thatwas entered into the IFW record, accompanying itscomments on patent owner’s response (which mustbe filed within 30 days from the date of service ofthe response). The 37 CFR 1.181 petition mayrequest that (A) if the patent owner response isexpunged, then the accompanying comments shouldnot be entered, and the requester’s comment periodbe re-set to run 30 days from the date of service ofa corrected patent owner response, and (B) if thepetition to expunge is denied/dismissed, then thecomments accompanying the petition should beentered and that 37 CFR 1.943(b) be waived to theextent that entry of the accompanying commentpaper is permitted.

II. CONTENT

The third party requester comments must be directedto points and issues covered by the Office actionand/or the patent owner’s response. The writtencomments filed by a third party requester shouldspecify the issues and points in the Office action orthe patent owner’s response to which each commentis directed. Thus, the third party requester should(1) set forth the point or issue, (2) state the page ofthe Office action and/or the patent owner responsewhere the point or issue is recited, and (3) thenpresent the third party requester’s discussion andargument as to the point or issue. If this is not doneby the third party requester, the comments shouldnot be held defective if the examiner can ascertainthat all of the comments filed by the third partyrequester are directed to the issues and points in theOffice action and/or the patent owner’s response.

Third party requester comments are limited to issuescovered by the Office action or the patent owner’sresponse. New prior art can be submitted with thecomments only where the prior art (A) is necessaryto rebut a finding of fact by the examiner, (B) isnecessary to rebut a response of the patent owner,or (C) for the first time became known or availableto the third party requester after the filing of therequest for inter partes reexamination.

As to item (A) above, 37 CFR 1.948(a)(1) permitsthe requester to provide new prior art rebutting theexaminer’s interpretation/finding of what the art ofrecord shows. However, a statement in an Officeaction that a particular claimed feature is not shownby the prior art of record (which includes referencesthat were cited by requester) does NOT permit therequester to then cite new art to replace the artoriginally advanced by requester. Such a substitutionof a new art for the art of record is not a rebuttal ofthe examiner’s finding that a feature in question isnot taught by the art of record. Rather, such asubstitution would amount to a rebuttal of a findingthat a feature in question is not taught by any art inexistence. A finding that the feature in question isnot taught by any art in existence could notrealistically be made for the reexaminationproceeding, since the proceeding does not include acomprehensive validity search, and such was notenvisioned by Congress as evidenced by the 35

2600-78Rev. 10.2019, June 2020


U.S.C. 314(c) mandate that reexaminationproceedings are to be conducted in the Office withspecial dispatch.

As to item (B) above, 37 CFR 1.948(a)(2) permitsthe requester to provide a new proposed rejection,where such new proposed rejection is necessitatedby patent owner’s amendment of the claims.Analogous to item (A) above, a statement by thepatent owner that a particular claimed feature is notshown, or is not obvious, by the prior art of recorddoes NOT permit the requester to then (forunamended claims) cite newly-presented prior artto show the particular claimed feature, or otherwisepropose any new rejection to replace the originallyadvanced proposed rejections in the reexaminationrequest. Such a substitution of a newly proposedrejection for the original proposed rejection (for theunamended claims) is not a rebuttal of the patentowner's statement asserting that a feature in questionis not taught, or is not obvious, by the art of record.Rather, to rebut the patent owner's statement inaccordance with 37 CFR 1.947 and 1.948(a)(2), therequester may cite newly presented art directed tosupporting the originally advanced proposedrejection(s) made in the request for reexamination,and include the new art as a supporting reference inthe existing rejection. For example, the newlypresented art may provide evidence that themodification of the reference(s) in the originallyadvanced proposed rejection would be obvious.

As to item (C) above, prior art submitted under 37CFR 1.948(a)(3) must be accompanied by astatement that explains the circumstances as to whenthe prior art first became known or available to thethird party requester, including the date and mannerthat the art became known or available, and why itwas not available earlier. The submission must alsoinclude a discussion of the pertinency of eachreference to the patentability of at least one claim.It is to be noted that entry of prior art submittedunder 37 CFR 1.948(a)(3) does not, in and of itself,allow for a proposed rejection based on that art.

In summary, newly presented patents and printedpublications (art) may be cited only in accordancewith items (A) – (C) above. A newly proposedrejection based on the newly presented art, or on artalready of record, may only be presented if the patent

owner has presented an amendment to the patentclaims, or proposed new claims, which necessitatedthe newly proposed rejection. The third partyrequester must present each newly proposed rejectionin compliance with the guidelines set forth in MPEP§ 2617, since any such new proposed rejection standson the same footing as a proposed rejection presentedwith the request for reexamination, and is treatedthe same way as to future Office actions and anyappeal. See MPEP § 2617 as to the requireddiscussion of the pertinency of each reference to thepatentability of at least one claim presented for thenewly submitted prior art. An explanation pursuantto the requirements of 35 U.S.C. 311 of how the artis applied is no less important at this stage of theprosecution, than it is when filing the request. (It isto be understood that a rejection may be “proposed”by requester if the examiner withdrew that rejectionin a prior Office action, and this is the first timerequester has had an entry right to make it a“proposed” rejection; however, such is not beingdiscussed here, since, although it is “newlyproposed,” it is an old rejection to the case, basedon art already of record).

Where the third party requester written commentsare directed to matters other than issues and pointscovered by the Office action or the patent owner’sresponse, or where the prior art submitted with thecomments does not satisfy at least one of (A) - (C)above, the written comments are improper. If thewritten comments are improper, the examiner shouldreturn the written comments (the entire paper) withan explanation of what is not proper; if the commentshave been scanned into the Image File Wrapper(IFW) for the reexamination proceeding prior to thediscovery of the impropriety, they should beexpunged from the record, with notification beingsent to the third party requester. If the commentswere filed prior to the mailing of an Action ClosingProsecution (e.g., in response to a non-final Officeaction), the notification to the third party requestermay provide a time period of fifteen (15) days forthe third party requester to rectify and refile thecomments. If, upon the second submission, thecomments are still not proper, the comments will bereturned to third party requester with an explanationof what is not proper, and at that point the commentscan no longer be resubmitted. The loss of right tosubmit further comments applies only to the patent

Rev. 10.2019, June 20202600-79


owner response at hand. See MPEP § 2666.20. Tothe extent that 37 CFR 1.947 provides that the thirdparty requester “may once” file written comments,that provision is hereby waived to the extent ofproviding the third party requester the one additionalopportunity to remedy a comments paper containingmerits-content that goes beyond what is permittedby the rules; 37 CFR 1.947 is not waived to provideany further opportunity in view of the statutoryrequirement for special dispatch in reexamination.

Any replacement comments submitted in responseto the notification must be strictly limited to (i.e.,must not go beyond) the comments in the original(returned) comments submission. No comments thatadd to those in the returned paper will be consideredfor entry.

The above practice of giving the third party requestera time period of 15 days to rectify and refilecomments that are responsive but go beyond theregulatory requirements to the extent discussedabove should not be confused with the situationwhere the third party requester files comments thatare late (untimely), or such comments are“inappropriate” within the meaning of 37 CFR1.957(a) and the time for response has expired.Where the comments are late or inappropriate, anadditional 15 days is not given; rather, the commentsmust be refused consideration pursuant to 37 CFR1.957(a).

The third party requester is not permitted to filefurther papers to supplement the third partyrequester’s written comments. Any such impropersupplemental comments will not be considered, andwill be returned. A third party requester may,however, file written comments to any supplementalresponse filed by the patent owner.

See MPEP § 2666.20 for the situation where a thirdparty requester elects not to file written commentson a patent owner response.

Where the patent owner does not respond to anOffice action, the third party requester is prohibitedfrom filing written comments under 37 CFR 1.947.

Note that a prior art citation which is proper under37 CFR 1.501 and is submitted by any party as a

separate paper and does not include argument andcomments and does not go to the merits of the case,will not be returned, but rather will be stored untilthe ongoing reexamination proceeding is concluded.See MPEP §§ 2204 and 2206. Also note that priorart returned by the examiner in connection with thethird party requester comments as discussed abovecan be resubmitted as a separate prior art citationunder 37 CFR 1.501, and it will be stored until theongoing reexamination proceeding is concluded.

III. EXAMINER WITHDRAWS A GROUND OFREJECTION

If the examiner withdraws a ground of rejection atany time in the prosecution of the inter partesreexamination proceeding, the following guidelinesapply:

(A) Where the examiner withdraws a ground ofrejection originally initiated by the examiner, suchwithdrawal should be clearly stated in the Officeaction as a decision favorable to patentability withrespect to the withdrawn rejection. The third partyrequester’s next set of comments that may be filed(after a patent owner response to an action) maypropose the withdrawn rejection as a “rejectionproposed by the third party requester.” In the eventthe patent owner fails to respond to all actionsleading to the Right of Appeal Notice (RAN),including the Action Closing Prosecution (ACP),and a RAN is then issued, the third party requestermay appeal this withdrawal of rejection as a finaldecision favorable to patentability. See 37 CFR41.61(a)(2). Likewise, where the rejection is firstwithdrawn in the RAN, there will be no requesteropportunity to comment prior to appeal, and therequester may appeal this withdrawal of rejection inthe RAN as a final decision favorable topatentability.

(B) Where the claims have not been amendedand the examiner withdraws a ground of rejectionpreviously proposed by the third party requester(e.g., based on patent owner’s argument or evidencesubmitted), the examiner should treat the issue as arejection proposed by the third party requester thatthe examiner refuses to adopt.

(C) Generally (subject to the below-statedexception), where the claims have been amendedand the examiner withdraws a ground of rejection

2600-80Rev. 10.2019, June 2020


previously proposed by the third party requester, thisis not a refusal of the examiner to adopt the rejectionproposed by the requester, since the rejection wasnever proposed as to the amended claims. The thirdparty requester’s next set of comments that may befiled (after a patent owner response to an action)may propose the withdrawn rejection as a “rejectionproposed by the third party requester” as to theamended claims. In the event the patent owner failsto respond to all actions leading to the RAN,including the ACP, and a RAN is then issued, thethird party requester may appeal this withdrawal ofrejection as a final decision favorable topatentability. See 37 CFR 41.61(a)(2). Likewise,where the rejection is first withdrawn in the RAN,there will be no requester opportunity to commentprior to appeal, and the requester may appeal thiswithdrawal of rejection in the RAN as a finaldecision favorable to patentability.

(D) If a claim is amended merely to include adependent claim that was previously subjected to aproposed requester rejection, and the examinerwithdraws that ground of rejection as to the newlyamended claim, such would be a refusal to adopt thethird party requester’s previously proposed rejectionof the dependent claim. Thus, the examiner wouldtreat the issue as a rejection proposed by the thirdparty requester that the examiner refuses to adopt.

2666.06 Service of Papers [R-08.2012]

37 CFR 1.915 Content of request for inter partesreexamination.

*****

(b) A request for inter partes reexamination must includethe following parts:

*****

(6) A certification by the third party requester that acopy of the request has been served in its entirety on the patentowner at the address provided for in § 1.33(c). The name andaddress of the party served must be indicated. If service was notpossible, a duplicate copy of the request must be supplied to theOffice.

*****

37 CFR 1.903 Service of papers on parties in inter partesreexamination.

The patent owner and the third party requester will be sent copiesof Office actions issued during the inter partes reexaminationproceeding. After filing of a request for inter partes reexamination by a third party requester, any document filed byeither the patent owner or the third party requester must beserved on every other party in the reexamination proceeding in

the manner provided in § 1.248. Any document must reflectservice or the document may be refused consideration by theOffice. The failure of the patent owner or the third partyrequester to serve documents may result in their being refusedconsideration.

Any paper filed with the Office, i.e., any submissionmade, by either the patent owner or the third partyrequester must be served on every other party in thereexamination proceeding including any other thirdparty requester that is part of the proceeding due tomerger of reexamination proceedings.

As proof of service, the party submitting the paperto the Office must attach a certificate of service tothe paper. It is required that the certificate of serviceset forth the name and address of the party servedand the method of service. Further, a copy of thecertificate of service must be attached with the copyof the paper that is served on the other party.

Lack of service poses a problem, since, by statute(35 U.S.C. 314(b)(2)), a third party requester mustfile written comments within a period of 30 daysfrom the date of service of the patent owner’sresponse, in order to be timely. In any instance whereproof of service is not attached to a paper, a Noticeof Defective Paper (PTOL-2069) will be mailed tothe party, providing the party with a time period ofone month or 30 days, whichever is longer, tocomplete the paper via a supplemental paperindicating the manner and date of service.

If it is known that service of a submission was notmade, form paragraph 26.68 should be used to givenotice to the party that made the submission of therequirement for service under 37 CFR 1.903.

¶ 26.68 Lack of Service in inter partes examination-37 CFR1.903

The submission filed [1] is defective because it appears that thesubmission was not served on [2]. After the filing of a requestfor inter partes reexamination by a third party requester, anydocument filed by either the patent owner or the third partyrequester must be served on the other party (or parties wheretwo third party requester proceedings are merged) in the interpartes reexamination proceeding in the manner provided in 37CFR 1.248. See 37 CFR 1.903.

It is required that service of the submission be made, and acertificate of service be provided to the Office, within ONEMONTH from the date of this letter or within the time remaining

Rev. 10.2019, June 20202600-81


in the response period of the last Office action (if applicable),whichever is longer.

Examiner Note:

1. This paragraph may be used where a submission to theOffice was not served as required in an inter partesreexamination proceeding.

2. In bracket 2, insert “patent owner” or “third partyrequester,” whichever is appropriate.

PTOL-2071 should be used as the cover sheet formailing the notice.

See MPEP § 2620 for service of the initial requeston the patent owner.

As pointed out above, the service provision of thestatute poses a problem, since, 35 U.S.C. 314(b)(2)mandates that, in order to be timely, a third partyrequester must file any written comments to thepatent owner’s response (to an Office action on themerits) within a period of 30 days from the date ofservice of such patent owner’s response.Accordingly, if a patent owner’s response to anOffice action on the merits that is served on a thirdparty requester is received by the third partyrequester more than 5 business days after the dateof service set forth on the certificate of service, thethird party requester may submit a verified statement,specifying the date of actual receipt, as an attachmentto the third party requester’s comments. The date ofservice will then be deemed by the Office to be thedate of actual receipt by the third party requester ofthe patent owner’s response.

2666.07-2666.09 [Reserved]

2666.10 Patent Owner Does Not Respond toOffice Action [R-11.2013]

37 CFR 1.957 Failure to file a timely, appropriate or completeresponse or comment in inter partes reexamination.

(a) If the third party requester files an untimely orinappropriate comment, notice of appeal or brief in an interpartes reexamination, the paper will be refused consideration.

(b) If no claims are found patentable, and the patent ownerfails to file a timely and appropriate response in an inter partes reexamination proceeding, the prosecution in the reexaminationproceeding will be a terminated prosecution and the Directorwill proceed to issue and publish a certificate concluding thereexamination proceeding under § 1.997 in accordance with thelast action of the Office.

(c) If claims are found patentable and the patent owner failsto file a timely and appropriate response to any Office action inan inter partes reexamination proceeding, further prosecutionwill be limited to the claims found patentable at the time of thefailure to respond, and to any claims added thereafter which donot expand the scope of the claims which were found patentableat that time.

(d) When action by the patent owner is a bona fide attemptto respond and to advance the prosecution and is substantiallya complete response to the Office action, but consideration ofsome matter or compliance with some requirement has beeninadvertently omitted, an opportunity to explain and supply theomission may be given.

I. OFFICE ACTION PRIOR TO ACTION CLOSINGPROSECUTION

If the patent owner fails to file a timely response toany Office action prior to an Action ClosingProsecution (ACP), it will result in the followingconsequences set forth in 37 CFR 1.957(b) or (c):

(A) Where there were no claims foundpatentable in the Office action, the examiner willissue a Notice of Intent to Issue Inter PartesReexamination Certificate (NIRC) terminatingprosecution and indicating the status of the claimsas canceled. See MPEP § 2687.

(B) Where at least one claim is found patentable,all future prosecution will be limited to the claim(s)found patentable at the time of the failure to respondand to claims which do not expand the scope of theclaim(s) found patentable at that time. The patentowner will not be permitted to add claims broaderin the scope than the patentable claims which remainin the proceeding at the time of the patent owner’sfailure to timely respond. The examiner will proceedto issue an ACP indicating that:

(1) Any claims under rejection or objectionare withdrawn from consideration and will becanceled upon publication of the certificate; and

(2) Prosecution will be limited to the claim(s)found patentable at the time of the failure to respondand to claims which do not expand the scope of theclaim(s) found patentable at that time.

The ACP will set a period for the patent ownerresponse and the third party requester commentsunder 37 CFR 1.951. See also MPEP §§ 2671.02and 2671.03.

2600-82Rev. 10.2019, June 2020

MANUAL OF PATENT EXAMINING PROCEDURE§ 2666.07-2666.09

II. ACTION CLOSING PROSECUTION

A response to an ACP is not required. Where thepatent owner does not respond to an ACP, the Officewill issue an Right of Appeal Notice (see MPEP§ 2673.02) in due course. Accordingly, theconsequences of 37 CFR 1.957(b) and (c), do NOTapply to the patent owner’s failure to respond to anACP.

III. RIGHT OF APPEAL NOTICE AND APPEAL

Where the patent owner fails to make a timely appealafter the issuance of a Right of Appeal Notice, orwhere a timely patent owner’s appeal is subsequentlydismissed, the following consequences would result:

(A) If no claim was found patentable at the timethat the patent owner fails to take the timely action,a NIRC will immediately be issued. See MPEP §2687.

(B) Where at least one claim was foundpatentable and the third party requester does notappeal, or fails to continue its appeal, the prosecutionof the reexamination proceeding should beterminated. In order to do so, a NIRC will be issued.See MPEP § 2687.

(C) Where at least one claim was foundpatentable and the third party appellant continues itsappeal, the claims in the proceeding will be limitedto the claim(s) found patentable at the time that thepatent owner fails to take the timely action, and allother claims will be withdrawn from considerationpending cancellation of same when the NIRC isissued. Any future prosecution is limited to theclaims that do not expand the scope of the claim(s)found patentable at that time.

IV. FAILURE OF THIRD PARTY REQUESTERTO TIMELY SUBMIT PAPER

See MPEP § 2666.20 for a discussion of theconsequences where the third party requester failsto timely submit a paper where a time period is setfor same.

2666.11 - 2666.19 [Reserved]

2666.20 Third Party Does Not CommentAfter Patent Owner Response [R-07.2015]


(a) If the third party requester files an untimely orinappropriate comment, notice of appeal or brief in an interpartes reexamination, the paper will be refused consideration.

*****

Where a third party requester does not timely filewritten comments on a patent owner response, anysubsequent submission of comments on thatresponse will be refused consideration. The thirdparty requester does not, however, lose any rightsas to commenting on future patent owner responses.The failure to file the comments applies only to thespecific response which the third party requesterelects not to comment upon.

Note that where the third party requester did not filecomments on a patent owner response that wasdetermined by the Office to be incomplete and theOffice provides the patent owner additional time tocomplete the response, the third party requester mayfile comments on the response once it is completed(by patent owner’s submission of a supplementalresponse), provided the comments are filed within30 days from the date of service of the supplementalresponse. However, where only a fee (other than anexcess claims fee to support an amendment) isneeded to complete the response, the third partyrequester may not file comments after the fee issubmitted; see MPEP § 2666.40 for a detaileddiscussion.

Where the third party requester fails to make a timelyappeal or the third party requester’s appeal isdismissed, the third party requester loses furtherrights as the appellant in the appeal. However,where a patent owner appellant continues its appeal,the third party requester as the respondent can filea respondent brief. Also, the third party requestercan enter the appeal pursuant to 37 CFR 41.77(c)and (e) (submission after a Board decision). SeeMPEP § 2682. In addition, the third party requestercan comment on any subsequent patent owner

Rev. 10.2019, June 20202600-83


response to any Office action, where the action isissued after the appeal.

Where the third party requester fails to timely appeal,or the requester’s appeal is dismissed, and no otherappeal is pending in the proceeding, the prosecutionof the reexamination proceeding should beterminated by the issuance of a NIRC.

2666.21 - 2666.29 [Reserved]

2666.30 Submission Not Fully Responsive toNon-final Office Action [R-07.2015]


*****

(d) When action by the patent owner is a bona fide attemptto respond and to advance the prosecution and is substantiallya complete response to the Office action, but consideration ofsome matter or compliance with some requirement has beeninadvertently omitted, an opportunity to explain and supply theomission may be given.

A response by the patent owner will be considerednot fully responsive to a non-final Office actionwhere a bona fide response to an examiner’s Officeaction is filed before the expiration of the permissibleresponse period but through an apparent oversightor inadvertence, some point necessary to a fullresponse has been omitted (i.e., appropriateconsideration of a matter that the action raised, orcompliance with some requirement, has beenomitted). In this situation, the prosecution of thereexamination proceeding should not be terminated.Rather, the examiner may, pursuant to 37 CFR1.957(d), treat the patent owner submission whichis not fully responsive to an Office action by:

(A) waiving the deficiencies (if not serious) inthe response and acting on the patent ownersubmission;

(B) treating the amendment/response as anincomplete response to the Office action andnotifying the patent owner (via a written notificationaction pursuant to 37 CFR 1.957(d)) that theresponse must be completed within the period forresponse set in the notification action (or within anyextension pursuant to 37 CFR 1.956)) to avoidtermination of the prosecution (pursuant to 37 CFR

1.957(b)) or limiting prosecution of the claims tothose found patentable (pursuant to 37 CFR1.957(c)).

Discussion of Option (A). Where a patent ownersubmission responds to the rejections, objections,or requirements in an Office action and is a bonafide attempt to advance the reexamination proceedingto final action, but contains a minor deficiency (e.g.,fails to treat every rejection, objection, orrequirement), the examiner may simply act on theamendment and issue a new Office action. The newOffice action may simply reiterate the rejection,objection, or requirement not addressed by the patentowner submission, or the action may indicate thatsuch rejection, objection, or requirement is no longerapplicable. In the new Office action, the examinerwill identify the part of the previous Office actionwhich was not responded to and clearly indicatewhat is needed. This course of action would not beappropriate in instances in which a patent ownersubmission contains a serious deficiency (e.g., thepatent owner submission does not appear to havebeen filed in response to the Office action).

Discussion of Option (B). Where the patent owner’ssubmission contains a serious deficiency, i.e.,omission, to be dealt with prior to issuing an actionon the merits and the period for response has expired,or there is insufficient time remaining to takecorrective action before the expiration of the periodfor response, the patent owner should be notified ofthe deficiency and the correction needed, and givena new time period for response (usually one month) pursuant to 37 CFR 1.957(d). The patent owner mustthen supply the omission within the new time periodfor response or any extensions under 37 CFR 1.956thereof to avoid termination of the prosecution(pursuant to 37 CFR 1.957(b)) or limitingprosecution of the claims to those found patentable(pursuant to 37 CFR 1.957(c)). In this situation, therequester has thirty days from the date of service ofpatent owner’s corrected or supplemental responseto file comments, unless only a fee (other than anexcess claims fee to support an amendment) isneeded to complete the response. See MPEP §2666.40 for a detailed discussion.

Form paragraph 26.06 may be used where option(B) is employed by the examiner to obtain correctionof the deficiency.

2600-84Rev. 10.2019, June 2020


¶ 26.06 Submission Not Fully Responsive to Office Action

The communication filed on [1] is not fully responsive to theprior Office action. [2]. The response appears to be bona fide,but through an apparent oversight or inadvertence, considerationof some matter or compliance with some requirement has beenomitted. Patent owner is required to supply the omission orcorrection to thereby provide a full response to the prior Officeaction.

A shortened statutory period for response to this letter is set toexpire (a) ONE MONTH, or THIRTY DAYS (whichever islonger), from the mailing date of this letter, or (b) after the duedate for response to the last Office action, whichever of (a) or(b) is longer. THE PERIOD FOR RESPONSE SET IN THISLETTER MAY BE EXTENDED UNDER 37 CFR 1.956.

If patent owner fails to timely supply the omission or correctionand thereby provide a full response to the prior Office action,the consequences set forth in 37 CFR 1.957(b) or (c) will result.See MPEP § 2666.10.

Examiner Note:

1. In bracket 2, the examiner should explain the nature of theomitted point necessary to complete the response, i.e., what partof the Office action was not responded to. The examiner shouldalso clearly indicate what is needed to correct the omission.

2. This paragraph may be used for a patent ownercommunication that is not completely responsive to theoutstanding (i.e., prior) Office action. See MPEP § 2666.30.

3. This practice does not apply where there has been adeliberate omission of some necessary part of a completeresponse. See MPEP § 2666.30.

I. NO NOTIFICATION BY TELEPHONE

It should be noted that the patent owner cannotsimply be notified by telephone that the omissionmust be supplied within the remaining time periodfor response. This notification would be an interview,and interviews are prohibited in inter partes reexamination. 37 CFR 1.955.

II. FURTHER DISCUSSION

The practice of giving the patent owner a time periodto supply an omission in a bona fide response(pursuant to 37 CFR 1.957(d)) does not apply wherethere has been a deliberate omission of somenecessary part of a complete response. It isapplicable only when the missing matter or lack ofcompliance is considered by the examiner as being“inadvertently omitted” pursuant to 37 CFR1.957(d). Once an inadvertent omission is broughtto the attention of the patent owner, the question ofinadvertence no longer exists. Therefore, a second

written notification action giving another new (onemonth) time period to supply the omission wouldnot be appropriate. However, if the patent owner’sresponse to the notification of the omission raises adifferent issue of a different inadvertently omittedmatter, a second written notification action may begiven.

This practice authorizes, but does not require, anexaminer to give the patent owner a new time periodto supply an omission. Thus, where the examinerconcludes that the patent owner is attempting toabuse the practice to obtain additional time for filinga response, the practice should not be followed.

2666.31 - 2666.39 [Reserved]

2666.40 Patent Owner Completion ofResponse and Third Party CommentsThereon [R-07.2015]

In most cases, the patent owner will have 30-daysor one month (whichever is longer) to complete theresponse. After the owner completes the response,the examiner will wait two months from the date ofservice of the patent owner’s completion of theresponse, and then take up the case for action, sincethe 30 days for the third party requester commentson the response as completed will have expired bythat time.

The third party requester may file comments on theOffice action and the response as completed within30 days of the date of service of the completedresponse. This is true whether or not the third partyrequester filed comments on the original responsethat was incomplete. Except as provided in theparagraph below, the response as completed istreated as a new response on-the-merits to the Officeaction; thus, the third party requester is entitled torespond and has 30 days to do so.

In some instances, the Office will mail a notice thatthe original response is incomplete only because afee (other than a failure to pay excess claims fees)is required for the patent owner to complete theresponse. In these instances, any third party requestercomments must be filed within 30 days from the

Rev. 10.2019, June 20202600-85


date of service of the patent owner’s originalresponse. The third party requester is not permittedto file comments in response to the submission ofthe fee, because the submission of a fee clearly addsnothing on the merits. An example of this would bewhere a terminal disclaimer is newly required in areexamination proceeding and is submitted, but thefee is inadvertently omitted. The response wouldthen be incomplete only as to the omitted fee. Anythird party requester comments on the responseincluding the terminal disclaimer must be filedwithin 30 days from the date of service of the patentowner’s response on the third party requester. Wherethe patent owner then completes the response bypaying the fee, the third party requester is notpermitted to then comment. However, if the patentowner’s response is not limited to the baresubmission of the fee, i.e., if the response alsoincludes argument, then the third party can commentsince the patent owner has addressed the merits ofthe case.

In those instances where there is a failure to pay anexcess claims fee by the patent owner, the new claim“package” in patent owner’s original request is notentered until the excess claims fee is paid. Therefore,the requester cannot comment on the new claim“package” until patent owner files a supplementalpaper that pays the required excess claims fee. Thus,the third party requester comments may be filedwithin 30 days from the date of service of the patentowner’s response or paper correcting the excessclaims fee deficiency.

2666.41-2666.49 [Reserved]

2666.50 Examiner Issues Notice of DefectivePaper in Inter Partes Reexamination[R-07.2015]

Even if the substance of a submission is complete,the submission can still be defective, i.e., an“informal submission.” Defects in the submissioncan be, for example:

(A) The paper filed does not include proof ofservice;

(B) The paper filed is unsigned;

(C) The paper filed is signed by a person whois not of record;

(D) The amendment filed by the patent ownerdoes not comply with 37 CFR 1.530(d)-(j); or

(E) The amendment filed by the patent ownerdoes not comply with 37 CFR 1.20(c)(3) and/or(c)(4).

Where a submission made is defective (informal),form PTOL-2069 is used to provide notification ofthe defects present in the submission. FormPTOL-2069 is reproduced below. In many cases, itis only necessary to check the appropriate box onthe form and fill in the blanks. However, if the defectdenoted by one of the entries on form PTOL-2069needs further clarification (such as the specifics ofwhy the amendment does not comply with 37 CFR1.530(d)-(j)), the additional information should beset forth on a separate sheet of paper which is thenattached to the form PTOL-2069.

The defects identified in (A) through (E) above arespecifically included in form PTOL-2069. If thesubmission contains a defect other than thosespecifically included on the form, the “Other” boxon the form is to be checked and the defect explainedin the space provided for the explanation. Forexample, a response might be presented on easilyerasable paper, and thus, a new submission wouldbe needed.

Where both the patent owner response and the thirdparty comments are defective, a first formPTOL-2069 should be completed for the patentowner (setting forth the defects in the patent ownerresponse), and a second form PTOL-2069 completedfor the third party requester (setting forth the defectsin the third party requester’s comments). A copy ofboth completed forms would then be sent to allparties.

A time period of one month or thirty days, whicheveris longer, from the mailing date of the formPTOL-2069 or equivalent letter will be set in theletter for correcting the defect(s), except as providedin MPEP §§ 2666.05 and 2667. The patent ownermay request an extension of time to correct thedefect(s) under 37 CFR 1.956. The third partyrequester, however, is barred from requesting anextension of time by statute. 35 U.S.C. 314(b)(2).

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If, in response to the notice, the defect still is notcorrected, the submission will not be entered. If thefailure to comply with the notice results in a patentowner failure to file a timely and appropriateresponse to any Office action, the prosecution of thereexamination proceeding generally will beterminated or limited under 37 CFR 1.957(whichever is appropriate).

If the defect in the patent owner response or the thirdparty requester comments is limited to a problem

with the signature, claim format, or some otherobvious defect (easily corrected), and such is notedby the technical support staff of the CRU processingthe papers, then form PTOL-2069 may be issued tonotify parties of the defect, and obtain a response tothe form, prior to forwarding the case to theexaminer. Otherwise, the responsibility is with theexaminer to obtain the needed correction of thedefects in the papers, which defects are eitheridentified to the examiner by the CRU technicalsupport staff or noted independently by the examiner.

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2666.51-2666.59 [Reserved]

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2666.60 Response by Patent Owner/ThirdParty to Notice of Defective Paper[R-07.2015]

The patent owner and/or the third party requesterwill be given a time period of one month or thirtydays, whichever is longer, from the mailing date ofthe notice of defective paper, except as provided inMPEP §§ 2666.05 and 2667, or the time remainingin the response/comments period set in the lastOffice action to correct the defect in a submission.If, in response to the notice, the defect still is notcorrected, the submission will not be entered. If thefailure to comply with the notice results in a patentowner failure to file a timely and appropriateresponse to any Office action, the prosecution of thereexamination proceeding will be terminated under37 CFR 1.957(b) or limited under 37 CFR 1.957(c)(as is appropriate for the case).

After the patent owner or the third party requesterhas provided a submission directed solely tocorrecting the defect, the other party is not permittedto comment on the submission correcting the defectif the submission correcting the defect is directed toform and does not go to the merits of the case. Thiswould be the case, for example, where the failure toprovide a signature on an affidavit or a certificate ofservice, or the failure to pay a fee (other than excessclaims fee), is corrected.

In the case of correcting a defective amendment orpaying an excess claims fee, however, other issuescome into play. For example, new claims 10-20 areimproperly presented in a patent owner response(e.g., not properly underlined) and form PTOL-2069(Box 4) is used to notify the patent owner that theclaim amendments are not entered and the need tocorrect this defect. In this situation, until the defectis corrected, claims 10-20 do not yet exist in theproceeding for the third party requester to commenton. Likewise, any argument that was directed to suchclaims is not truly ripe for the third party requestercomment. After the patent owner corrects the defect,claims 10-20 come into existence in the proceeding,and the argument presented by the patent ownerbecomes relevant. At this point, the third partyrequester has a right to provide comments inresponse to the Office action and patent owner’s

argument, whether or not the argument that wasincluded in the original patent owner submission isre-presented with the paper correcting the defect.Thus, any third party requester comments submittedeither in response to the patent owner’s initial paper(presenting the informal claims) or in response tothe patent owner’s supplemental paper (correctingthe informality) will be considered by the examiner.

Any submission correcting the defect which providesa discussion of the merits should (A) set forth thatdiscussion separately from the portion of theresponse that corrects the defect, and (B) clearlyidentify the additional discussion as going to themerits. The additional discussion going to the meritsmust, in and of itself, have an entry right, or theentire submission will be returned to the party thatsubmitted it, and one additional opportunity (30-daysor one month, whichever is longer) will be provided,to correct the defect without a discussion of themerits. If the portion directed to the merits is notclearly delineated and identified, the entiresubmission may be returned to the party thatsubmitted it, and one additional opportunity (30-daysor one month, whichever is longer) is then given forthat party to correct the defect without intermixeddiscussion of the merits. The examiner may,however, choose to permit entry of such a paper.

2667 Handling of Inappropriate or UntimelyFiled Papers [R-10.2019]

37 CFR 1.939 Unauthorized papers in inter partesreexamination.

(a) If an unauthorized paper is filed by any party at anytime during the inter partes reexamination proceeding it willnot be considered and may be returned.

(b) Unless otherwise authorized, no paper shall be filedprior to the initial Office action on the merits of the inter partesreexamination.

The applicable regulations (such as 37 CFR 1.501,1.902 and 1.905, 1.948 and 1.939) provide thatcertain types of correspondence will not beconsidered. Whenever reexamination correspondenceis received, a decision is required of the Office as tothe action to be taken on the correspondence basedon what type of paper it is and whether it is timely.In certain instances, the submitted correspondence(submission) will be entered into the reexaminationfile and be considered. In other instances, the

Rev. 10.2019, June 20202600-89


correspondence will be entered into thereexamination file, but will not be considered. Instill other instances, the correspondence will not beentered into the reexamination file and will bereturned to the party that sent it. The return of certaininappropriate submissions, not being considered,reduces the amount of paper which would ultimatelyhave to be scanned into the record. Where aninappropriate (unauthorized, improper) paper hasalready been scanned into the Image File Wrapper(IFW) of the reexamination proceeding beforediscovery of the inappropriate nature of the paper,the paper cannot be physically returned to the partythat submitted it. Instead, the paper will be“returned” by expunging it, i.e., by marking thepaper as “non-public” and “closed” so that the paperdoes not appear in the active IFW record with theother active papers that comprise the public recordof the reexamination proceeding.

Where papers are filed during reexaminationproceedings which are inappropriate because of somedefect, such papers will be expunged from theofficial file by marking the papers “closed” and“non-public”.

I. TYPES OF PAPERS EXPUNGED WITHAPPROVAL OF THE CENTRALREEXAMINATION UNIT DIRECTOR OR SPRS

A. Filed by Patent Owner

1. Premature Response/Comments by Patent Owner

Any response/comments as to materials of record orany amendment filed by the patent owner prior tothe first Office action is premature and will not beconsidered, and will be expunged. 37 CFR 1.939.Where a paper is to be expunged based on the abovereason, and the paper is not accompanied by apetition under 37 CFR 1.182 or 1.183, the CRUDirector or SPRS will expunge the paper. Where thesubmission is accompanied by a petition under 37CFR 1.182 or 1.183, the reexamination proceedingshould be addressed in the Office of Patent LegalAdministration (OPLA) to issue a decision on thepetition.

Any petition requesting merger of a reexaminationwith a reexamination or reissue, or a stay of a

reexamination or reissue in place of merger, that isfiled prior the order to reexamine (37 CFR 1.931)will be expunged and will not be considered. SeeMPEP §§ 2686.01 and 2686.03. The reexaminationproceeding should be addressed in OPLA to issue adecision on the petition.

2. Response Is Too Long

Where the length of the patent owner submissionexceeds that permitted by 37 CFR 1.943, thesubmission is improper. Accordingly, pursuant to37 CFR 1.957(d), if the submission is made prior tothe mailing of an ACP, a Notice will be mailed tothe patent owner. The Notice will be issued by theexaminer and will permit the patent owner toexercise one of the following two options:

(A) Submit a re-drafted response that does notexceed the page limit set by 37 CFR 1.943; or

(B) File a copy of the supplemental responsewith pages redacted to satisfy the 37 CFR 1.943 pagelimit requirement.

The Notice will set a period of 15 days from the dateof the notice to respond. If no response is received,the improper (too-long) patent owner submissionwill not be considered. If the submission wasnecessary to respond to an outstanding Office action,the prosecution of the reexamination proceeding iseither terminated pursuant to 37 CFR 1.957(b) orlimited pursuant to 37 CFR 1.957(c). Any previouslysubmitted third party comments in response to thisimproper (too-long) patent owner submission wouldalso not be considered, as being moot, since thepatent owner did not in fact respond to the Officeaction in accordance with the rules.

If a response to the Notice is received, then under37 CFR 1.947, the third party requester may oncefile written comments, limited to issues raised bythe Office action or the patent owner’s response tothe Notice, within 30 days from the date of serviceof the patent owner’s response to the Notice.

With respect to the length of the papers, thefollowing additional information is to be noted.Similar to the Federal Rules of Appellate Procedure,the provisions of 37 CFR 1.943(c) are waived to theextent that the table of contents pages, the table of

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case law pages, and the pages of the claims (but notclaim charts applying the art to the claims) areexcluded from the page limits that are set forth by37 CFR 1.943(c). The claims appendix is expresslyexcluded from the length (see 37 CFR 1.943(c)).Also, the sections of the appellant and respondentbriefs required under 37 CFR 41.67(c)(1)(i)-(iv) and(ix)-(xi) and 37 CFR 41.68(b)(1)(i) - 37 CFR41.68(b)(1)(iv) and (viii)-(xi) respectively (i.e., RealParty in Interest, Related Appeals and Interferences,Status of Claims, Status of Amendments, EvidenceAppendix, Related Proceedings Appendix, andCertificate of Service) are excluded from the pagelimits that are set forth by 37 CFR 1.943(c). Sectionsare excluded if and only if those sections are limitedto the information required by those sections. If otherinformation is included, the entire page count of thesection containing such other information will beincluded.

Any affidavit or declaration (or a clearly definedportion thereof) that contains opinion(s) of theaffiant/declarant, or argument(s) that the art eitherdoes or does not anticipate or render obvious theclaims, or specific claim elements, of the patentunder reexamination, is considered to be part of thecomments submitted by the patent owner, or by thethird party requester, and is subject to the page limitrequirements of 37 CFR 1.943. Affidavits ordeclarations that are excluded from the page limitrequirements include declarations attempting toswear behind (antedate) the filing date of a reference,or to establish the date of a printed publication;declarations that provide comparative tests andresults and a scientific or technological analysis ofthe results; and other declarations which are limitedto establishing facts. However, if the patent owner’saffidavit or declaration includes any legal argumentas to how an outstanding/proposed rejection isovercome, then the page(s) of the affidavit ordeclaration in which the argument appears would beincluded against the page limit count. Likewise, ifa third party requester affidavit or declarationincludes any legal argument as to how a rejection issupported, then the page(s) of the affidavit ordeclaration in which the argument appears would beincluded against the page limit count. Similarly,attached exhibits presenting data or drawings are notincluded against the page limit count, unless anexhibit or drawing includes argument as to how the

outstanding rejection is overcome. Any page(s) ofthe exhibit or sheet(s) of drawings that include suchargument would be included against the page limitcount.

3. Improper Patent Owner Response

The patent owner can only file once under 37 CFR1.951(a). Any second or supplemental submissionafter ACP by the patent owner will be expunged,unless prosecution has been reopened. See MPEP§ 2672.

Where a paper is to be expunged based on the abovereason or other appropriate reasons, and the paperis not accompanied by a petition under 37 CFR 1.182or 1.183, the CRU Director or the SPRSwill expunge the paper. Where a petition under 37CFR 1.182 or 1.183 has been filed, the reexaminationproceeding should be addressed in OPLA to issue adecision on the petition.

4. Improper Petition

Note that after an opposition to any patent ownerpetition is filed by a third party requester (regardlessof whether such opposition has an entry right or not),any further patent owner paper inopposition/rebuttal/response to the third partyopposition paper will not be considered and will beexpunged. There must be a limitation on partyiterations of input, especially given the statutorymandate for special dispatch in reexamination.Further, any petition requesting that an extension oftime be denied will be expunged, since a third partyrequester does not have a statutory right to challengethis discretionary procedural process in thereexamination proceeding; whether or not the timeis extended clearly does not go to the merits of thereexamination proceeding. The same would applyto oppositions as to requester petitions for acceptinglate papers, e.g., an appeal brief, and the like. Thepatent owner could, however, file a petition inopposition to a third party requester’s 37 CFR 1.181petition, to support the action taken by the Office,since the Office has an unequivocal right to enforceits rules and practice, and patent owner can explainwhy the Office acted within its right.

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B. Filed by Third Party Requester

1. Premature Comments by Third Party Requester

Any comments filed by a third party requestersubsequent to the request for reexamination (i.e., notpart of it) and prior to the first Office action ispremature and will not be considered, and will beexpunged. 37 CFR 1.939. Any petition to stay areexamination proceeding because of an interference(MPEP § 2686.02), which is filed prior to the firstOffice action in the reexamination proceeding willbe expunged and will not be considered.

Any submission of comments filed by a third partyrequester where the patent owner has not respondedto the outstanding Office action is premature, and itwill be expunged and will not be considered. 37 CFR1.947.

Where a paper is to be expunged based on the abovereason, and the paper is not accompanied by apetition under 37 CFR 1.182 or 1.183, the CRUDirector or the SPRS will expunge the paper. Wherethe premature submission is accompanied by apetition under 37 CFR 1.182 or 1.183, thereexamination proceeding should be addressed inOPLA to issue a decision on the petition.

2. Submission Is Too Long

Where the length of the third party requestersubmission exceeds that permitted by 37 CFR 1.943,the submission is improper. Accordingly, if thesubmission is made prior to the mailing of an ACP,a Notice will be issued by the examiner and mailedto the third party requester permitting the third partyrequester to exercise one of the following twooptions:

(A) Submit a re-drafted submission that doesnot exceed the page limit set by 37 CFR 1.943; or

(B) File a copy of the supplemental submissionwith pages redacted to satisfy the 37 CFR 1.943 pagelimit requirement.

The Notice will set a period of 15 days from the dateof the notice to respond to the notice. If no responseis received, the improper third party requestersubmission will not be considered.

For additional information with respect to the lengthof the papers, see subsection I.A.2. above, which isincorporated herein by reference.

3. Improper Comments

Where the third party requester comments are notlimited to the scope provided by the rules, they areimproper and will not be considered, and will beexpunged. 37 CFR 1.947 and 1.951(b). For example,comments following the patent owner’s response toa first Office action must be limited to issues and/orpoints covered by the first action and/or the patentowner’s response (in accordance with 37 CFR1.947); if they are not, they will be expunged. SeeMPEP § 2666.05 for action to be taken by theexaminer.

For any third party requester comments containinga submission of prior art, the prior art must be limitedsolely to prior art which is necessary to rebut afinding of fact by the examiner, which is necessaryto rebut a response of the patent owner, or, whichfor the first time became known or available to thethird party requester after the filing of the requestfor inter partes reexamination. Prior art submittedfor the reason that it became known or available tothe third party requester for the first time after thefiling of the request for inter partes reexaminationmust be accompanied by a statement as to when theprior art first became known or available to the thirdparty requester and must include a discussion of thepertinency of each reference to the patentability ofat least one claim. If the prior art submission doesnot satisfy at least one of the criteria noted above,the submission is improper and will be expungedand will not be considered. See MPEP § 2666.05 foraction to be taken by the examiner.

Supplemental third party requester comments areimproper since 37 CFR 1.947 states that commentscan “once” be filed. Such supplemental commentsare improper, will not be considered, and will beexpunged. However, supplemental third partycomments are permitted in response to the patentowner’s completion of a response, even where theinitial third party comments were provided after theincomplete patent owner response, unless patentowner’s submission correcting the defect is solelydirected to form and does not go to the merits of the

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case (e.g. payment of a fee other than excess claimsfee). Supplemental third party comments are alsopermitted in response to a supplemental patent ownerresponse.

The third party requester can only respond to a patentowner submission after an Action ClosingProsecution (ACP), and may only do so once under37 CFR 1.951(b). Any original third party requestercomments (where the patent owner does not respond)or any second or supplemental responsive commentsafter ACP are improper and will be expunged. SeeMPEP § 2672.

Third party comments in response to a patent ownersubmission which does not respond to an Officeaction are not permitted, since 37 CFR 1.947 onlypermits comments in response to the patent owner’sresponse to an Office action. For example, wherethe patent owner submits a new power of attorney,the third party requester is not permitted to submita set of comments, because the patent ownersubmission is not a response to an Office action. Ifthe third party requester does comment, it will beexpunged.

4. Improper Petition

Any petition to stay a reexamination proceedingbecause of an interference (MPEP § 2686.02), whichis filed prior to the first Office action in thereexamination proceeding will be expunged and willnot be considered. 37 CFR 1.939.

Any petition by a third party requester to stay areexamination proceeding because of an interferencewhere the third party is not a party to the interferencewill be expunged and will not be considered. SeeMPEP § 2686.02.

Any third party requester petition requesting mergerof a reexamination with a reexamination or anapplication for reissue will not be considered. SeeMPEP §§ 2686.01 and 2686.03. Also, a petition bythe requester requesting that a later-filed case shouldnot be merged (see MPEP § 2640 “Second OrSubsequent Request...”) will be expunged and willnot be considered, where it is filed prior the orderto reexamine. Prior to the order, such a petition isnot ripe for decision, because it is possible that

reexamination will not be granted and there will benothing to merge.

In all these situations, the reexamination proceedingshould be addressed in OPLA to issue a decision onthe petition.

Note that after an opposition to any third partyrequester petition is filed by a patent owner(regardless of whether such opposition has an entryright or not), any further requester paper inopposition/rebuttal/response to the patent owneropposition paper will not be considered and will beexpunged. There must be a limitation on partyiterations of input, especially given the statutorymandate for special dispatch in reexamination.Further, any petition requesting that an extension oftime be denied will be expunged, since a requesterdoes not have a statutory right to challenge thisdiscretionary procedural process in the reexaminationproceeding; whether or not the time is extendedclearly does not go to the merits of the reexaminationproceeding. The same would apply to oppositionsas to petitions for revival of a terminated prosecution,petitions challenging not making an action a finalrejection or an Action Closing Prosecution (ACP),reopening prosecution, and entry of an amendmentafter final rejection or ACP, and the like. The thirdparty requester could, however, file a petition inopposition to a patent owner’s 37 CFR 1.181petition, to support the action taken by the Office,since the Office has an unequivocal right to enforceits rules and practice, and requester can explain whythe Office acted within its right.

C. Filed by Third Party Other Than Third PartyRequester

No submissions on behalf of any third parties otherthan third party reexamination requesters will beconsidered unless such submissions are inaccordance with 37 CFR 1.915 or are one of theexceptions noted below. Thus, a petition to merge areexamination, or stay one of them because of theother, which is filed by a party other than the patentowner or the third party requester of reexaminationwill not be considered, but will be expunged as beingimproper under 37 CFR 1.905. See also MPEP §2686.01 and MPEP § 2686.03.

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A paper submitted by a third party other than a thirdparty requester must be (1) a 37 CFR 1.501 artcitation limited to the citation of patents and printedpublications and an explanation of the pertinencyand applicability of the patents and printedpublications, or (2) bare notice of suits and otherproceedings involving the patent (see MPEP §§ 2686and 2686.04) which may include copies of decisionsor other court papers, or papers filed in the court,from litigations or other proceedings involving thepatent. Such submissions must be without additionalcomment and cannot include further arguments orinformation. If the submission by the third party isnot one of the above-described two types of papers,it will be expunged or destroyed. If a submission bythe third party of either of the above-described twotypes of papers contains additional material that goesbeyond the scope of what is permitted, the paper willbe expunged or destroyed. If a proper 37 CFR 1.501submission is filed by a third party after the order toreexamine, it will be stored.

II. TYPES OF DEFECTIVE PAPERS TO BERETAINED IN THE “REEXAMINATION FILE”

A. Filed by Patent Owner

1. Unsigned Papers

Papers filed by the patent owner which are unsigned,or signed by fewer than all of the patent ownerswhere no attorney or agent is of record or acting inrepresentative capacity, will be denied consideration,but will be retained in the file. 37 CFR 1.33.

2. No Proof of Service

Papers filed by the patent owner in which no proofof service is included, and proof of service isrequired, may be denied consideration. Such papersshould be denied consideration where it cannot bedetermined that service was in fact made and thethird party requester’s response/comment/appeal/brief period is to be set by the date of service.See 37 CFR 1.248 and MPEP § 2666.06.

3. Late Papers

Where patent owner has filed a paper which wasfiled after the period for response set by the Office,

the paper will be retained in the file but will not beconsidered.

A patent owner submission following a third partyrequester submission, where the patent ownersubmission is filed subsequent to the permitted timefrom the date of service of third party requester’ssubmission, will be retained in the file but will notbe considered. The date that the Office actuallyreceives the third party requester’s submission hasno bearing here; it is the date of service on the patentowner which is critical.

Thus, for example, in instances where there is a rightto file an opposition to a petition, any suchopposition must be filed within two weeks of thedate upon which a copy of the original petition wasserved on the opposing party, to ensureconsideration. Any such opposition that is filed afterthe two-week period will remain in the record, eventhough it need not be considered.

4. Defective Amendment

A proposed amendment to the description and claimswhich does not comply with 37 CFR 1.530(d)-(k)will be retained in the file, but the amendment willnot be considered. An exception to this is where theonly defect in the amendment is that it enlarges thescope of the claims of the patent or introduces newmatter. Such an amendment will be considered, anda rejection will be made in the next Office action.

5. Premature Appeal

Where a notice of appeal or notice of cross appealis filed before a Right of Appeal Notice (RAN) hasbeen issued, the paper will be retained in the file butwill not be considered (other than to inform theparties that the appeal is not acceptable).

B. Filed by Third Party Requester

1. Unsigned Papers

Papers filed by a third party requester which areunsigned or not signed by the third party requesteror requester’s attorney/agent of record orattorney/agent acting in representative capacity willbe denied consideration. 37 CFR 1.33.

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2. No Proof of Service

Papers filed by a third party requester in which noproof of service is included as to the patent ownerand/or any other third party requester, and proof ofservice is required, may be denied consideration.Such papers should be denied consideration whereit cannot be determined that service was in fact madeand another party’s response/comment/appeal/briefperiod is to be set by the date of service. 37 CFR1.248.

3. Late Papers

Any third party requester submission following apatent owner’s submission, where the third partyrequester submission is filed subsequent to thepermitted time from the date of service of the patentowner’s submission, will be retained in the file, butwill not be considered. Note, for example, a 37 CFR1.947 submission of third party comments followingthe patent owner’s response. Where the third partycomments are submitted subsequent to 30 days fromthe date of service of the patent owner’s response,they will be retained in the file but will not beconsidered. The date that the Office actually receivesthe patent owner’s response has no bearing here; itis the date of service on the third party requesterwhich is critical.

Where the third party requester has filed a paperwhich is untimely, that is, it was filed after the periodset by the Office for response, the paper will beretained in the file, but will not be considered.

Thus, for example, in instances where there is a rightto file an opposition to a petition, any suchopposition must be filed within two weeks of thedate upon which a copy of the original petition wasserved on the opposing party, to ensureconsideration. Any such opposition that is filed afterthe two-week period will remain in the record, eventhough it need not be considered.

4. Premature Appeal

Where a notice of appeal or notice of cross appealis filed before a Right of Appeal Notice (RAN) hasbeen issued, the paper will be retained in the file,but will not be considered (other than to inform the

parties that the appeal is not acceptable). 37 CFR41.61.

III. PAPERS LOCATED IN THE “PATENT FILE”

Submissions of art citations in an inter partes reexamination will be stored until the reexaminationis concluded. Note 37 CFR 1.902.

Submission of art citations in an inter partes reexamination is permitted by the patent owner andthe third party requester to the extent stated in theregulations. 37 CFR 1.501 and 1.902. All othersubmissions of art citations based solely on priorpatents or publications filed after the date of theorder to reexamine are retained as stated above. Suchcitations are not immediately entered into the patentfile, but rather are stored until the reexaminationproceedings have been concluded. See MPEP §2602.

2668 Petition for Entry of Late Papers forRevival of Reexamination Proceeding[R-10.2019]

35 U.S.C. 27 Revival of applications; reinstatement ofreexamination proceedings.

The Director may establish procedures, including therequirement for payment of the fee specified in section 41(a)(7),to revive an unintentionally abandoned application for patent,accept an unintentionally delayed payment of the fee for issuingeach patent, or accept an unintentionally delayed response bythe patent owner in a reexamination proceeding, upon petitionby the applicant for patent or patent owner.

35 U.S.C. 41 Patent fees; patent and trademark searchsystems.

(a) GENERAL FEES. —The Director shall charge thefollowing fees:

*****

(7) On filing each petition for the revival of anabandoned application for a patent, for the delayed payment ofthe fee for issuing each patent, for the delayed response by thepatent owner in any reexamination proceeding, for the delayedpayment of the fee for maintaining a patent in force, for thedelayed submission of a priority or benefit claim, or for theextension of the 12-month period for filing a subsequentapplication, $1,700. The Director may refund any part of thefee specified in this paragraph, in exceptional circumstances asdetermined by the Director.

*****

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35 U.S.C. 133 Time for prosecuting application.

Upon failure of the applicant to prosecute the application withinsix months after any action therein, of which notice has beengiven or mailed to the applicant, or within such shorter time,not less than thirty days, as fixed by the Director in such action,the application shall be regarded as abandoned by the partiesthereto.

37 CFR 1.137 Revival of abandoned application, orterminated or limited reexamination proceeding.

(a) Revival on the basis of unintentional delay. If the delayin reply by applicant or patent owner was unintentional, apetition may be filed pursuant to this section to revive anabandoned application or a reexamination prosecution terminatedunder § 1.550(d) or § 1.957(b) or limited under § 1.957(c).

(b) Petition requirements. A grantable petition pursuant tothis section must be accompanied by:

(1) The reply required to the outstanding Office actionor notice, unless previously filed;

(2) The petition fee as set forth in § 1.17(m);

(3) Any terminal disclaimer (and fee as set forth in §1.20(d)) required pursuant to paragraph (d) of this section; and

(4) A statement that the entire delay in filing therequired reply from the due date for the reply until the filing ofa grantable petition pursuant to this section was unintentional.The Director may require additional information where there isa question whether the delay was unintentional.

*****

(e) Request for reconsideration. Any request forreconsideration or review of a decision refusing to revive anabandoned application, or a terminated or limited reexaminationprosecution, upon petition filed pursuant to this section, to beconsidered timely, must be filed within two months of thedecision refusing to revive or within such time as set in thedecision. Unless a decision indicates otherwise, this time periodmay be extended under:

(1) The provisions of § 1.136 for an abandonedapplication;

(2) The provisions of § 1.550(c) for a terminated exparte reexamination prosecution, where the ex parte reexamination was filed under § 1.510; or

(3) The provisions of § 1.956 for a terminated interpartes reexamination prosecution or an inter partes reexamination limited as to further prosecution, where the interpartes reexamination was filed under § 1.913.

*****

If the patent owner in an inter partes reexaminationproceeding fails to file a timely and appropriateresponse to any Office action and no claims areallowable, then pursuant to 37 CFR 1.957(b), theprosecution of the reexamination proceeding isterminated, and a certificate under 37 CFR 1.997 is

issued canceling all claims of the patent that wereunder reexamination.

An inter partes reexamination prosecutionterminated under 37 CFR 1.957(b) can be revivedif the delay in response by the patent owner wasunintentional in accordance with 37 CFR 1.137.

If the patent owner in an inter partes reexaminationproceeding fails to file a timely and appropriateresponse to any Office action and at least one claimis allowable, then pursuant to 37 CFR 1.957(c), theproceeding continues but is limited to the claim(s)found allowable at the time of the failure to respond(i.e., in the Office action).

Rejected claims terminated under 37 CFR 1.957(c)can be revived if the delay in response by the patentowner was unintentional in accordance with 37 CFR1.137.

All petitions in reexamination proceedings to acceptlate papers and revive will be decided in the Officeof Patent Legal Administration (OPLA).

I. PETITION BASED ON UNAVOIDABLE DELAYIS NO LONGER AVAILABLE

37 CFR 1.137 was revised to implement the changesin the Patent Law Treaties Implementation Act of2012 (PLTIA) to eliminate revival of abandonedapplications and reexamination prosecutionterminated under 37 CFR 1.957(b) or limited under37 CFR 1.957(c) under the ‘‘unavoidable’’ standardand to provide for the revival of abandonedapplications and the acceptance of delayed responsesin reexamination by patent owners on the basis ofunintentional delay. Specifically, section 201(b) ofthe PLTIA added new 35 U.S.C. 27, which providesthat the Director may establish procedures to revivean unintentionally abandoned application for patent,accept an unintentionally delayed payment of thefee for issuing a patent, or accept an unintentionallydelayed response by the patent owner in areexamination proceeding, upon petition by theapplicant for patent or patent owner. Accordingly,37 CFR 1.137(a) was amended to eliminate theprovisions pertaining to petitions on the basis ofunavoidable delay.

2600-96Rev. 10.2019, June 2020


II. PETITION BASED ON UNINTENTIONALDELAY

As discussed in subsection I. above, section 201(b)of the PLTIA added new 35 U.S.C. 27, whichprovides that the Director may establish proceduresto accept an unintentionally delayed response by thepatent owner in a reexamination proceeding, uponpetition by the patent owner. The patent lawsformerly provided for revival of an unintentionallyabandoned application only in the patent feeprovisions of 35 U.S.C. 41(a)(7) . See Public Law97–247, section 3(a), 96 Stat. 317–18 (1982). Theunintentional delay fee provisions of 35 U.S.C.41(a)(7) were imported into, and were applicable to,all ex parte reexamination proceedings by section4605 of the American Inventors Protection Act of1999. The unintentional delay provisions of 35U.S.C. 41(a)(7) became effective in reexaminationproceedings on November 29, 2000. However, thisstatutory structure raised questions concerning theOffice’s authority to revive an unintentionallyabandoned application (without a showing ofunavoidable delay) in certain situations. See e.g., Aristocrat Techs. Australia Pty Ltd. v. Int’l GameTech., 543 F.3d 657 (Fed. Cir. 2008).

37 CFR 1.137(a), as amended in the final rule toimplement the PLTIA, provides that if the delay inreply by patent owner was unintentional, a petitionmay be filed pursuant to 37 CFR 1.137 to revive areexamination prosecution terminated under 37 CFR1.957(b) or limited under 37 CFR 1.957(c). 37 CFR1.137(b) states the petition requirements.Specifically, 37 CFR 1.137(b) provides that agrantable petition pursuant to 37 CFR 1.137 mustbe accompanied by: (1) The reply required to theoutstanding Office action or notice; unless previouslyfiled; (2) the petition fee as set forth in 37 CFR1.17(m); and (3) a statement that the entire delay infiling the required reply from the due date for thereply until the filing of a grantable petition pursuantto this section was unintentional. 37 CFR 1.137continues to provide that the Director may requireadditional information where there is a questionwhether the delay was unintentional.

III. RENEWED PETITION

Reconsideration may be requested of a decisiondismissing or denying a petition under 37 CFR 1.137to revive a terminated reexamination prosecution.The request for reconsideration must be submittedwithin one (1) month from the mail date of thedecision for which reconsideration is requested. Anextension of time may be requested only under37 CFR 1.956; extensions of time under 37 CFR1.136 are not available in reexamination proceedings.Any reconsideration request which is submittedshould include a cover letter entitled “RenewedPetition under 37 CFR 1.137”.

IV. PETITION REQUIREMENTS

See also MPEP § 711.03(c) for a detailed discussionof the requirements of petitions filed under 37 CFR1.137.

2669 [Reserved]

2670 Clerical Handling [R-07.2015]

Central Reexamination Unit (CRU) technical supportstaff will carry out clerical handling and processingof inter partes reexamination cases. The technicalsupport staff will perform all PALM matters neededfor the case, e.g., PALMing in the file and PALMingit to the examiner. After the examiner has completeda decision on the request for inter partesreexamination and/or an Office action, the technicalsupport staff will process for mailing the decisionand/or Office action to the patent owner and to thethird party requester(s), if needed. The technicalsupport staff will also mail any copies of anyreferences which are needed. A transmittal formPTOL-2070 with the third party requester’s addresswill be completed. The technical support staff willcoordinate its activities with those of the examinerand the CRU Supervisory Patent ReexaminationSpecialists (SPRSs) or Technology Center (TC)Quality Assurance Specialists (QASs) and theparalegals.

See MPEP §§ 2234 and 2250 for manner of enteringamendments.

Rev. 10.2019, June 20202600-97


For entry of amendments in a merged inter partesreexamination proceeding (i.e., an inter partesreexamination proceeding merged with anotherreexamination proceeding or with a reissueapplication), see MPEP §§ 2686.01 and 2686.03.

Where an amendment is submitted in proper formand it is otherwise appropriate to enter theamendment, the amendment will be entered forpurposes of the reexamination proceeding, eventhough the amendment does not have legal effectuntil the certificate is issued. Any “new matter”amendment to the disclosure (35 U.S.C. 132) willbe required to be canceled, and claims containingnew matter will be rejected under 35 U.S.C. 112. A“new matter” amendment to the drawing is ordinarilynot entered. See MPEP §§ 608.04, 608.04(a) and608.04(c). Where an amendment enlarges the scopeof the claims of the patent, the claims will be rejectedunder 35 U.S.C. 314(a).

2671 Examiner Action FollowingResponse/Comments or Expiration of Timefor Same [R-07.2015]

I. RECONSIDERATION

After response by the patent owner and any thirdparty comments, the patent under reexamination willbe reconsidered. The patent owner and the third partyrequester will be notified as to any claims rejected,any claims found patentable and any objections orrequirements made. The patent owner may respondto such Office action with or without amendment,and the third party requester may provide commentsafter the patent owner’s response. If the patent ownerresponse contains an amendment, the examiner willconsider the amendment to determine whether theamendment raises issues of 35 U.S.C. 112 and/orbroadening of the claims under 35 U.S.C. 314. Thepatent under reexamination will be reconsidereduntil the proceeding is ready for closing prosecution,at which point the examiner will issue an ActionClosing Prosecution (ACP). See MPEP § 2671.02.

II. CASE IS TAKEN UP FOR ACTION

The case should be acted on promptly, in accordancewith the statutory requirement for “special dispatchwithin the Office” (35 U.S.C. 314(c)).

After the examiner receives notification of aresponse/comment (e.g., having the patent owner’sresponse to the Office action and any third partyrequester comments on that response), he/she willprepare for and participate in a conference inaccordance with MPEP § 2671.03.

After the conference, the proceeding, with thecompleted action, will be forwarded to the CRUSupervisory Patent Reexamination Specialist (SPRS)or Technology Center (TC) Quality AssuranceSpecialist (QAS) for review. If the CRU SPRS/TCQAS returns the case to the examiner forcorrection/revision, the correction/revision must behandled expeditiously and returned to the CRUSPRS/TC QAS within the time set for such by theCRU SPRS/TC QAS.

III. OPTIONS AS TO OFFICE ACTION TO ISSUE

At this point in the proceeding, the examiner willhave the following options as to the next Officeaction to issue:

(A) There is no timely response by the patentowner (since the patent owner did not respond, nothird party requester comments may be filed):

(1) If all claims are under rejection, theexaminer will issue a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC). SeeMPEP § 2687. All claims will be canceled by formalexaminer’s amendment (attached as part of theNIRC).

(2) If at least one claim is free of rejectionand objection, the examiner will issue an ActionClosing Prosecution (ACP). In the ACP, it will bestated that any claims under rejection or objectionare withdrawn from consideration and will becanceled upon issuance of a NIRC. It will further bestated that the proceeding will be limited to theclaims found patentable at the time of the failure torespond, and to claims (added or amended) whichdo not expand the scope of the claims foundpatentable at that time. See MPEP § 2666.10.

It should be noted that even in a situation where therehas been no patent owner response, the examiner isalways free to issue a supplemental Office actionproviding a new rejection of claims previouslyfound patentable, where new information comes

2600-98Rev. 10.2019, June 2020


to the attention of the examiner warranting the newrejection. Of course, such an action would ordinarilynot be made an ACP.

(B) There is a timely response by the patentowner, and the third party requester does not timelyprovide comments:

(1) If the response by the patent owner isincomplete, the examiner may issue anincomplete-response action. See MPEP § 2666.30.

(2) If there is a formality defect in theresponse by the patent owner, the examiner will issuea Notice of Defective Paper in Reexam. See MPEP§ 2666.50.

(3) If the patent owner’s response is completeand defect-free, and the proceeding is ready forclosing prosecution, the examiner will issue an ACP.See MPEP § 2671.02. This is true if all claims aredetermined to be patentable, all claims aredetermined to be rejected, or if some claims aredetermined to be patentable and some claims aredetermined to be rejected. After the ACP has beenissued, the patent owner can submit comments withor without a proposed amendment in accordancewith MPEP § 2672, and the third party requester canthen file comments responsive to the patent owner’ssubmission.

(4) If the patent owner’s response is completeand defect-free, and the proceeding is not ready forclosing prosecution, the examiner will issue a newOffice action that does not close prosecution. SeeMPEP § 2671.01.

(C) There is a timely response by the patentowner, and the third party requester does providetimely comments:

(1) If the response by the patent owner isincomplete, the examiner may issue anincomplete-response action. See MPEP § 2666.30.

(2) If the comments by third party requestergo beyond the scope of what is permitted for thethird party comments, the examiner will follow theprocedures set forth in MPEP § 2666.05 for impropercomments.

(3) If there is a formality defect in theresponse by the patent owner, the examiner will issuea Notice of Defective Paper in Reexam. See MPEP§ 2666.50.

(4) If there is a formality defect in thecomments by the third party requester, the examinerwill issue a Notice of Defective Paper in Reexam.See MPEP § 2666.50.

(5) If the response and comments are inorder, and the proceeding is ready for closingprosecution, the examiner will issue an ACP. SeeMPEP § 2671.02. This is true if all claims aredetermined to be patentable, all claims aredetermined to be rejected, or if some claims aredetermined to be patentable and some claims aredetermined to be rejected. After the ACP has beenissued, the patent owner can submit comments withor without a proposed amendment in accordancewith MPEP § 2672 and the third party requester canthen file comments responsive to the patent owner’ssubmission.

(6) If the response and comments are in orderand the proceeding is not ready for closingprosecution, the examiner will issue a new Officeaction that does not close prosecution. See MPEP §2671.01.

(D) There is a timely request for issuance of anExpedited Right of Appeal Notice:

37 CFR 1.953(b) provides for the issuanceof an expedited Right of Appeal Notice (RAN),where the criteria for the same is satisfied. At anytime after the patent owner’s response to the firstOffice action on the merits in an inter partesreexamination, the patent owner and third partyrequester(s) may request the immediate issuance ofa RAN. Where such a request is presented in theproceeding, see MPEP § 2673.02 for guidance as towhether an expedited Right of Appeal Notice willbe issued.

2671.01 Examiner Issues Action on MeritsThat Does Not Close Prosecution [R-07.2015]

37 CFR 1.949 Examiner’s Office action closing prosecutionin inter partes reexamination.

Upon consideration of the issues a second or subsequent time,or upon a determination of patentability of all claims, theexaminer shall issue an Office action treating all claims presentin the inter partes reexamination, which may be an actionclosing prosecution. The Office action shall set forth allrejections and determinations not to make a proposed rejection,and the grounds therefor. An Office action will not usually closeprosecution if it includes a new ground of rejection which wasnot previously addressed by the patent owner, unless the newground was necessitated by an amendment.

Rev. 10.2019, June 20202600-99


I. WHEN A NON-ACP ACTION IS ISSUED

After reviewing the patent owner’s response andthird party requester comments (if such commentsare filed), the examiner may determine that theproceeding is not ready for issuing an Action ClosingProsecution (ACP). Such a determination would bebased upon the following:

(A) In accordance with 37 CFR 1.949, an actionwill not normally close prosecution if it includes anew ground of rejection which was not previouslyaddressed by the patent owner, unless the newground was necessitated by an amendment. Theexaminer will not normally close prosecution wherea new ground of rejection not necessitated by anamendment is made, because the patent owner’sright to amend the claims becomes limited afterprosecution is closed. For an exception where thepatent owner submits an IDS, see MPEP § 2671.02.

(B) Where an ACP would be proper, but theexaminer feels that the issues are not yet clearlydefined, it is always within the discretion of theexaminer to issue an Office action that does not closeprosecution (rather than an ACP).

II. OVERALL CONTENT

Where the examiner determines that the proceedingis not ready for issuing an ACP, the examiner willissue an Office action that will be similar in form toa first Office action, but will differ in that itaddresses the positions and argument set forth in thepatent owner’s response and the third party requestercomments (if such comments are filed). This Officeaction will be a statement of the examiner’s position,so complete that the next Office action can properlybe made an action closing prosecution.

The action should be comprehensive. It shouldaddress all issues as to the patents or printedpublications. The action will clearly set forth eachground of rejection and/or ground of objection, andthe reasons supporting the ground(s). The action willalso clearly set forth each rejection proposed by thethird party requester that the examiner refuses toadopt. Reasons why the rejection proposed by thethird party is not appropriate (i.e., why the claimcannot be rejected under the ground proposed by thethird party requester) must be clearly stated for each

rejection proposed by the third party requester thatthe examiner refuses to adopt. Comprehensivereasons for patentability must be given for eachdetermination favorable to patentability of claims.See MPEP § 1302.14 for examples of suitablestatements of reasons for allowance.

III. REVIEW OF AMENDATORY MATTERUNDER 35 U.S.C. 112

Where an amendment has been submitted in thepatent owner’s response, the amendatory matter (i.e.,matter revised or newly added) should be reviewedfor compliance with 35 U.S.C. 112. As to the contentof the patent that has not been revised, a reviewbased upon 35 U.S.C. 112 is not proper inreexamination, and no such review should be made.

IV. WITHDRAWAL OF REJECTION

Where the examiner withdraws a ground of rejectionoriginally initiated by the examiner, such withdrawalshould be clearly stated in the Office action as adecision favorable to patentability with respect tothe withdrawn rejection. The third party requester’snext set of comments that may be filed (after a patentowner response to an action) may propose thewithdrawn rejection as a “rejection proposed by thethird party requester.” In the event the patent ownerfails to respond to all actions leading to the Right ofAppeal Notice (RAN), including the ACP, and aRAN is then issued, the third party requester mayappeal this withdrawal of rejection as a final decisionfavorable to patentability. See 37 CFR 41.61(a)(2).

Where the claims have not been amended and theexaminer withdraws a ground of rejection previouslyproposed by the third party requester (e.g., based onthe patent owner’s argument or evidence submitted),the examiner should treat the issue as a rejectionproposed by the third party requester that theexaminer refuses to adopt.

Generally (subject to the below-stated exception),where the claims have been amended and theexaminer withdraws a ground of rejection previouslyproposed by the third party requester, this is not arefusal of the examiner to adopt the rejection thatwas proposed by the requester, since the rejectionwas never proposed as to the amended claims. The

2600-100Rev. 10.2019, June 2020


third party requester’s next set of comments thatmay be filed (after a patent owner response to anaction) may propose the withdrawn rejection as a“rejection proposed by the third party requester” asto the amended claims. In the event the patent ownerfails to respond to all actions leading to the RAN,including the ACP, and a RAN is then issued, thethird party requester may appeal this withdrawal ofrejection as a final decision favorable topatentability. See 37 CFR 41.61(a)(2).

If a claim is amended merely to include a dependentclaim that was previously subjected to a proposedrequester rejection, and the examiner withdraws thatground of rejection as to the newly amended claim,such would be a refusal to adopt the third partyrequester’s previously proposed rejection of thedependent claim. Thus, the examiner would treat theissue as a rejection proposed by the third partyrequester that the examiner refuses to adopt.

V. ISSUES NOT WITHIN SCOPE OFREEXAMINATION

If questions not within the scope of reexaminationproceedings (for example, questions of patentabilitybased on public use or on sale, conduct issues,abandonment under 35 U.S.C. 102) have been newlyraised by the patent owner response or the thirdparty requester comments being addressed by thepresent Office action, the existence of such questionswill be noted by the examiner in the Office action,using form paragraph 26.03.



Examiner Note:



Note that if questions of patentability based on publicuse or on sale, conduct issues, abandonment under

35 U.S.C. 102(c), etc., have been independentlydiscovered by the examiner during a reexaminationproceeding but were not raised by the third partyrequester or the patent owner, the existence of suchquestions will not be noted by the examiner in anyOffice action, because 37 CFR 1.906(c) is onlydirected to such questions “raised by the patentowner or the third party requester.”

VI. COVER SHEET

Form PTOL-2064 should be used as the Officeaction cover sheet. Since the Office action isresponsive to a patent owner response, and possiblythe third party requester comments, the space on thePTOL-2064 for the date of the communication(s) towhich the Office action is responsive to should befilled in. Generally, the patent owner is given twomonths to respond to the action, and thus “Two”should be inserted in the appropriate space.

VII. SIGNATORY AUTHORITY

As with all other Office correspondence on themerits in a reexamination proceeding, the actionmust be signed by a primary examiner.

VIII. CONCLUDING PARAGRAPHS

In view of the requirement for “special dispatch” ininter partes reexamination proceedings (35 U.S.C.314(c)), it is intended that the examiner be able toclose prosecution at the earliest possible time.Accordingly, the Office action should include astatement cautioning the patent owner that acomplete response should be made to the action,since the next action is expected to be an ACP. Theaction should further caution the patent owner thatthe requirements of 37 CFR 1.116(b) will be strictlyenforced after an ACP and that any amendment afteran ACP must include “a showing of good andsufficient reasons why they are necessary and werenot earlier presented” in order to be considered. Formparagraph 26.05 should be inserted at the end of theOffice action followed by form paragraph 26.73.

¶ 26.05 Papers To Be Submitted in Response to Action

In order to ensure full consideration of any amendments,affidavits or declarations, or other documents as evidence ofpatentability, such documents must be submitted in response tothis Office action. Submissions after the next Office action,

Rev. 10.2019, June 20202600-101


which is intended to be an Action Closing Prosecution (ACP),will be governed by 37 CFR 1.116(b) and (d), which will bestrictly enforced.








P.O. Box 1450


By FAX to: (571) 273-9900



Randolph Building

401 Dulany Street




Examiner Note:



IX. PROCESS OF PREPARING THE ACTION

Upon receipt of a patent owner response to the action(and third party requester comments wherepermitted) by the CRU, or upon the expiration ofthe time to submit same, the examiner will benotified. The examiner will prepare for and set up apanel review conference as per MPEP § 2671.03, todiscuss the issuance of the Office action. Theexaminer may prepare the Office action after theconference, or may prepare the Office action priorto the conference and revise it as needed after theconference.

If the conference confirms the examiner’spreliminary decision to reject and/or allow the claimsand issue a non-final Office action, the proposedOffice action shall be issued and signed by theexaminer, with the two or more other confereesinitialing the action (as “conferee”) to indicate theirpresence in the conference.

X. NO RESPONSE BY PATENT OWNER

Where the patent owner fails to timely respond toan action requiring a response and there are nopatentable claims, a Notice of Intent to Issue InterPartes Reexamination Certificate (NIRC) will beissued. No panel review conference is needed in thisinstance, as the issuance of the NIRC is essentiallyministerial.

2671.02 Examiner Issues Action ClosingProsecution (ACP) [R-07.2015]

37 CFR 1.949 Examiner’s Office action closing prosecutionin inter partes reexamination.

Upon consideration of the issues a second or subsequent time,or upon a determination of patentability of all claims, theexaminer shall issue an Office action treating all claims presentin the inter partes reexamination, which may be an actionclosing prosecution. The Office action shall set forth allrejections and determinations not to make a proposed rejection,and the grounds therefor. An Office action will not usually closeprosecution if it includes a new ground of rejection which wasnot previously addressed by the patent owner, unless the newground was necessitated by an amendment.

2600-102Rev. 10.2019, June 2020




Although an Action Closing Prosecution (ACP) hasmany attributes similar to a “final rejection” madein an ex parte reexamination proceeding or in anon-provisional application, it is not a final action,and, as such, it cannot be appealed from. An appealcan only be taken after the examiner issues a Rightof Appeal Notice (RAN). See MPEP § 2673.02.

Before an ACP is in order, issues should be clearlydeveloped. When all claims are found patentable inthe first action, the examiner will, at that point, issuean ACP, since the patent owner has nothing torespond to. Otherwise, it is intended that the secondOffice action in the reexamination proceeding willordinarily be an ACP. The criteria for issuing anACP is analogous to that set forth in MPEP §706.07(a) for making a rejection final in anapplication.

All parties to the reexamination should recognizethat a reexamination proceeding may result in thefinal cancellation of claims from the patent and thatthe patent owner does not have the right to continuethe proceeding by refiling under 37 CFR 1.53(b) or1.53(d) nor by filing a Request for ContinuedExamination under 37 CFR 1.114, and the patentowner cannot file an inter partes reexaminationrequest (see MPEP § 2612). Complete and thoroughactions by the examiner, coupled with completeresponses by the patent owner and completecomments by the third party requester (includingearly presentation of evidence under 37 CFR1.131(a) or 1.132) will go far in reaching a desirableearly termination of the prosecution of thereexamination proceeding.

In making an ACP, (A) all outstanding grounds ofrejection of record should be carefully reviewed, (B)all outstanding determinations of patentability(decisions to not make a proposed rejection) ofrecord should be carefully reviewed, and (C) anygrounds of rejection relied upon and anydeterminations of patentability relied upon shouldbe reiterated.

I. CONTENT

The grounds of rejection and determinations ofpatentability must (in the ACP) be clearly developedto such an extent that the patent owner and the third

party requester may readily judge the advisabilityof filing comments after an ACP pursuant to 37 CFR1.951(a) and (b), respectively.

The ACP should address all issues as to the patentsor printed publications. The ACP will clearly setforth each rejection proposed by the third partyrequester that the examiner refuses to adopt. Reasonswhy the rejection proposed by the third partyrequester is not appropriate (i.e., why the claimcannot be rejected under the ground proposed by thethird party requester) must be clearly stated for eachrejection proposed by the third party requester thatthe examiner refuses to adopt. Comprehensivereasons for patentability must be given for eachdetermination favorable to patentability of claims.See MPEP § 1302.14 for examples of suitablestatements of reasons for allowance.

Where a previous Office action contains a completestatement of a ground of rejection or of reasons fornot making a proposed rejection, the ACP mayincorporate by reference that statement. In any event,the ACP must also include a rebuttal of anyarguments raised in the patent owner’s response andmust reflect consideration of any comments madeby the third party requester.

II. REVIEW OF AMENDATORY MATTER UNDER35 U.S.C. 112

Where an amendment has been submitted in thepatent owner’s response, the amendatory matter (i.e.,matter revised or newly added) should be reviewedfor compliance with 35 U.S.C. 112. As to the contentof the patent that has not been revised, a reviewbased upon 35 U.S.C. 112 is not proper inreexamination, and no such review should be made.

III. WITHDRAWAL OF REJECTION

Where the examiner withdraws a ground of rejectionoriginally initiated by the examiner, such withdrawalshould be clearly stated in the ACP as a decisionfavorable to patentability with respect to thewithdrawn rejection. The third party requester’s nextset of comments that may be filed (after a patentowner response to an action) may propose thewithdrawn rejection as a “rejection proposed by thethird party requester.” In the event the patent owner

Rev. 10.2019, June 20202600-103


fails to respond to the ACP and a Right of AppealNotice (RAN) is then issued, the third party requestermay appeal this withdrawal of rejection as a finaldecision favorable to patentability. See 37 CFR41.61(a)(2). Where the examiner withdraws a groundof rejection previously proposed by the third partyrequester, the examiner should treat the issue asrejection proposed by the third party requester thatthe examiner refuses to adopt.

IV. ISSUES NOT WITHIN SCOPE OFREEXAMINATION

If questions not within the scope of reexaminationproceedings (for example, questions of patentabilitybased on public use or on sale, conduct issues,abandonment under 35 U.S.C. 102(c) have beennewly raised by the patent owner response or thethird party requester comments being addressedby the ACP, the existence of such questions will benoted by the examiner in the ACP, using formparagraph 26.03.



Examiner Note:



V. COVER SHEET

Form PTOL-2065 should be used as the cover sheetfor the ACP. Since the Office action is responsiveto a patent owner response, and possibly the thirdparty requester comments, the space on thePTOL-2065 for the date of the communication(s) towhich the Office action is responsive to should befilled in. Generally, the patent owner is given onemonth to respond to the action, and thus “One”should be inserted in the appropriate space for such.

VI. SIGNATORY AUTHORITY

As with all other Office correspondence on themerits in a reexamination proceeding, the ACP mustbe signed by a primary examiner.

VII. CONCLUDING PARAGRAPHS

The ACP should conclude with the following formparagraphs:

¶ 26.07 Action Closing Prosecution

This is an ACTION CLOSING PROSECUTION (ACP); seeMPEP § 2671.02.

(1) Pursuant to 37 CFR 1.951(a), the patent owner mayonce file written comments limited to the issues raised in thereexamination proceeding and/or present a proposed amendmentto the claims which amendment will be subject to the criteriaof 37 CFR 1.116 as to whether it shall be entered and considered.Such comments and/or proposed amendments must be filedwithin a time period of 30 days or one month, whichever islonger, from the mailing date of this action. Where the patentowner files such comments and/or a proposed amendment, thethird party requester may once file comments under 37 CFR1.951(b) responding to the patent owner’s submission within30 days from the date of service of the patent owner’ssubmission on the third party requester

(2) If the patent owner does not timely file comments and/ora proposed amendment pursuant to 37 CFR 1.951(a), then thethird party requester is precluded from filing comments under37 CFR 1.951(b).

(3) Appeal cannot be taken from this action, since it is nota final Office action.








P.O. Box 1450


2600-104Rev. 10.2019, June 2020




By FAX to: (571) 273-9900



Randolph Building

401 Dulany Street




Examiner Note:



VIII. PROCESS OF PREPARING THE ACTION

After an examiner has determined that thereexamination proceeding is ready for the ACPaction, the examiner will set up a panel reviewconference as per MPEP § 2671.03, to discuss theissuance of the ACP action. The examiner mayprepare the action after the conference, or mayprepare the action prior to the conference and reviseit as needed after the conference.

If the conference confirms the examiner’spreliminary decision to reject and/or allow the claimsand issue an ACP, the proposed ACP action shallbe issued and signed by the examiner, with the twoother conferees initialing the action (as conferee) toindicate their presence in the conference. Whenready, the examiner’s action given to the CRU SPRSand/or technical support staff for processing andmailing.

IX. WHERE PATENT OWNER FAILS TORESPOND AND CLAIMS HAVE BEEN FOUNDPATENTABLE

Where the patent owner fails to respond to the firstOffice action (or any subsequent Office action whichis prior to ACP) and claims have been foundpatentable in the first action (or a subsequent action),the examiner will issue an ACP (see MPEP § 2671).The ACP should repeat all determinations ofpatentability (decisions to not make a proposedrejection) applicable to the patentable claims andincorporate by reference the reasons for eachdetermination (the reasons for not making eachproposed rejection). If the examiner realizes thatmore explanation would be helpful, the examinershould include it. Since the patent owner failed torespond to the first Office action (or a subsequentaction), the proceeding will be limited to the claimsfound patentable and to new claims which do notexpand the scope of the claims found patentable (ifthe new claims have an entry right or are otherwiseentered at the option of the examiner). See MPEP §2666.10. A panel review conference pursuant toMPEP § 2671.03 will be held.

X. ART CITED BY PATENT OWNER DURINGPROSECUTION

Where art is submitted in a prior art citation under37 CFR 1.501 and/or 37 CFR 1.555 (an IDS filed ina reexamination is construed as a prior art citation)and the submission is not accompanied by astatement similar to that of 37 CFR 1.97(e), theexaminer may use the art submitted and make thenext Office action an ACP action whether or not theclaims have been amended, provided that no othernew ground of rejection is introduced by theexaminer based on art not cited in the prior artcitation. See MPEP § 706.07(a).

2671.03 Panel Review [R-07.2015]

A panel review will be conducted at each stage ofthe examiner’s examination in an inter partesreexamination proceeding, other than for actionssuch as notices of informality or incompleteresponse. Matters requiring decision outside of theexaminer’s jurisdiction (e.g., decisions on petitionsor extensions of time, or Central Reexamination Unit

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(CRU) support staff notices) will not be reviewedby a panel.

The panel review is carried out for each Officeaction. The panel reviews the examiner’s preliminarydecision to reject and/or allow the claims in thereexamination proceeding, prior to the issuance ofeach Office action.

I. MAKE-UP OF THE PANEL

The panel will consist of three members, one ofwhom will be a manager. The second member willbe the examiner in charge of the proceeding. Themanager may select the third member. Theexaminer-conferees will be primary examiners, orexaminers who are knowledgeable in the technologyof the invention claimed in the patent beingreexamined and/or who are experienced inreexamination practice. The majority of those presentat the conference will be examiners who were notinvolved in the examination or issuance of the patent.An “original” examiner (see MPEP § 2636) shouldbe chosen as a conferee only if that examiner is themost knowledgeable in the art, or there is some otherspecific and justifiable reason to choose an originalexaminer as a participant in the conference.

II. PANEL PROCESS

The examiner must inform his/her manager of his/herintent to issue an Office action. The manager willthen convene a panel and the members will conferand review the patentability of the claim(s). If theconference confirms the examiner’s preliminarydecision to reject and/or allow the claims, the Officeaction shall be issued and signed by the examiner,with the two other conferees initialing the action (as“conferee”) to indicate their participation in theconference. Both conferees will initial, even thoughone of them may have dissented from the 3-partyconference decision as to the patentability of claims.If the conference does not confirm the examiner’spreliminary decision, the examiner will reevaluateand issue an appropriate Office action .

Where the examiner in charge of the proceeding isnot in agreement with the conference decision, themanager will generally assign the proceeding toanother examiner.

III. WHAT THE CONFERENCES SHOULDACCOMPLISH

Each conference will provide a forum to considerall issues of patentability as well as procedural issueshaving an impact on patentability. Review of thepatentability of the claims by more than one primaryexaminer should diminish any perception that thepatent owner can disproportionately influence theexaminer in charge of the proceeding. Theconferences will also provide greater assurance thatall matters will be addressed appropriately. All issuesin the proceeding will be viewed from theperspectives of three examiners. What the examinerin charge of the proceeding might have missed, oneof the other two conference members would likelydetect. The conference will provide for acomprehensive discussion of, and finding for, eachissue.

IV. CONSEQUENCES OF FAILURE TO HOLDCONFERENCE

Should the examiner issue Office action withoutpanel review, the patent owner or the third partyrequester who wishes to object must promptly filea paper alerting the Office of this fact. (The failureto hold a panel review conference would be notedby the parties where there are no conferees’ initialsat the end of the Office action.) Any challenge ofthe failure to hold a panel review conference mustbe made within two weeks of receipt of the Officeaction issued, or the challenge will not be considered.In no event will the failure to hold a patentabilityreview conference, by itself, be grounds for vacatingany Office decision(s) or action(s) and “restarting”the reexamination proceeding.

2672 Patent Owner Comments/AmendmentAfter ACP and Third Party RequesterResponsive Comments [R-07.2015]

37 CFR 1.951 Options after Office action closing prosecutionin inter partes reexamination.

(a) After an Office action closing prosecution in an interpartes reexamination, the patent owner may once file commentslimited to the issues raised in the Office action closingprosecution. The comments can include a proposed amendmentto the claims, which amendment will be subject to the criteriaof § 1.116 as to whether or not it shall be admitted. Thecomments must be filed within the time set for response in theOffice action closing prosecution.

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(b) When the patent owner does file comments, a thirdparty requester may once file comments responsive to the patentowner’s comments within 30 days from the date of service ofpatent owner’s comments on the third party requester.

I. ONE OPPORTUNITY TO MAKE SUBMISSIONSUNDER 37 CFR 1.951(a) AND (b)

After an Action Closing Prosecution (ACP), thepatent owner may once file (pursuant to 37 CFR1.951(a)) written comments limited to the issuesraised in the reexamination proceeding and/orpresent a proposed amendment to the claims. Wherethe patent owner does so, the third party requestermay once file (pursuant to 37 CFR 1.951(b))comments responsive to the patent owner’scomments. Any second or supplemental submissionafter ACP by either the patent owner or the thirdparty requester will thus be returned.

II. TIME FOR MAKING PATENT OWNERSUBMISSION UNDER 37 CFR 1.951(a)

The patent owner submission under 37 CFR 1.951(a)of comments and/or proposed amendment must befiled within the time period set for response to theACP. Normally, the ACP will set a period of 30 daysor one month (whichever is longer) from the mailingdate of the ACP.

An extension of the time period for filing the patentowner’s submission under 37 CFR 1.951(a) may berequested under 37 CFR 1.956. The time period maynot, however, be extended to run past 6 months fromthe date of the ACP.

The examiner and all other parties to thereexamination should recognize that a reexaminationproceeding may result in the final cancellation ofclaims from the patent and that the patent ownerdoes not have the right to continue the proceedingby refiling under 37 CFR 1.53(b) or 1.53(d), nor byfiling a Request for Continued Examination under37 CFR 1.114, and the patent owner cannot file aninter partes reexamination request (see MPEP §2612). Accordingly, the examiner and other partiesshould identify and develop all issues prior to theACP, including the presentation of evidence under37 CFR 1.131(a) and 1.132.

III. PATENT OWNER MAKES SUBMISSIONAFTER ACP; LIMITATION ON PATENTOWNER’S SUBMISSION

Once an ACP that is not premature has been enteredin a reexamination proceeding, the patent owner nolonger has a right to unrestricted further prosecution.Consideration of the proposed amendmentssubmitted after ACP (pursuant to 37 CFR 1.951(a))will be governed by the strict standards of 37 CFR1.116. The patent owner’s submission of commentsunder 37 CFR 1.951(a) must be limited to the issuesraised in the ACP. If the submission addresses issuesnot already raised in the ACP, then the commentswill be returned as improper; if the comments havebeen scanned into the Image File Wrapper (IFW)for the reexamination proceeding prior to thediscovery of the impropriety, they should beexpunged from the record, with notification beingsent to the party that submitted the comments. Noadditional opportunity will be given for the patentowner to correct the defect unless a petition under37 CFR 1.183 is granted to waive 37 CFR 1.951 asto its one opportunity limitation for the patent ownercomment. If such a petition under 37 CFR 1.183 isgranted and the patent owner submits correctedcomments under 37 CFR 1.951(a), the third partyrequester may then once file supplemental commentsresponding to the ACP and the patent owner’scorrected comments within one month from the dateof service of the patent owner’s corrected commentson the third party requester. Any corrected patentowner comments under 37 CFR 1.951(a) that aresubmitted in the rare instance where a petition isgranted must be strictly limited to (i.e., must not gobeyond) the content of the original commentssubmission.

IV. PATENT OWNER MAKES SUBMISSIONAFTER ACP; THIRD PARTY REQUESTERCOMMENTS ARE LIMITED

Where the patent owner files comments and/or aproposed amendment pursuant to 37 CFR 1.951(a),the third party requester may once file comments(pursuant to 37 CFR 1.951(b)) responding to thepatent owner’s comments, and/or proposedamendment, and/or the issues raised in the ACP. See35 U.S.C. 314(b)(2). Such third party requestercomments must be filed within 30 days from thedate of service of the patent owner’s comments

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and/or proposed amendment on the third partyrequester. If the third party requester’s commentsgo beyond the scope of responding to the patentowner’s comments, and/or proposed amendments,and/or the issues raised in the ACP, then the thirdparty requester’s comments will be returned asimproper; if the comments have been scanned intothe Image File Wrapper (IFW) for the reexaminationproceeding prior to the discovery of the impropriety,they should be expunged from the record, withnotification being sent to the party that submittedthe comments. No additional opportunity will begiven for the third party requester to correct thedefect unless a petition under 37 CFR 1.183 isgranted to waive 37 CFR 1.951 as to its oneopportunity limitation. Any replacement third partyrequester comments under 37 CFR 1.951 (that aresubmitted in the rare instance where a petition isgranted) must be strictly limited to (i.e., must not gobeyond) the content of the original commentssubmission.

V. PATENT OWNER DOES NOT MAKESUBMISSION AFTER ACP

If the patent owner does not timely file commentsor a proposed amendment pursuant to 37 CFR1.951(a), then the third party requester is precludedfrom filing comments under 37 CFR 1.951(b).Accordingly, a Right of Appeal Notice (RAN) willbe issued where the time for filing the patent ownercomments and/or amendment has expired and nopatent owner paper containing comments oramendment has been received. It should be notedthat where the patent owner chooses not to file asubmission pursuant to 37 CFR 1.951(a), no rightsof appeal are lost.

VI. ACTION CLOSING PROSECUTION -PREMATURE

If the patent owner is of the opinion that the Officeaction closing prosecution (ACP) in the inter partes reexamination proceeding is premature, the patentowner may, in addition to the comments submittedunder 37 CFR 1.951(a), file a petition under 37 CFR1.181 (to challenge the making of the action an ACP)within the time period for filing the comments under37 CFR 1.951(a).

2673 Examiner Consideration of SubmissionsAfter ACP and Further Action [R-07.2015]

I. WHEN THE CASE IS TAKEN UP FOR ACTION

The patent owner is given 30 days or one month,whichever is longer, to make the 37 CFR 1.951(a)submission after Action Closing Prosecution (ACP).If no patent owner submission under 37 CFR1.951(a) is received after two months from the ACP,the examiner will take up the case for action. Thecase should be acted on promptly, in accordancewith the statutory requirement for “special dispatchwithin the Office” (35 U.S.C. 314(c)). Where apatent owner obtained an extension of time under37 CFR 1.956, the examiner will wait until theextended time plus one month expires before takingup the case for action.

If the patent owner submission under 37 CFR1.951(a) is received, the third party requester willthen have 30 days from service of the patent owner’ssubmission to file the third party requester’s 37 CFR1.951(b) submission. If no third party requestersubmission under 37 CFR 1.951(b) is received aftertwo months from the date of service of the patentowner’s 37 CFR 1.951(a) submission, the examinerwill take up the case for action.

Where both the 37 CFR 1.951(a) and (b) submissionshave been received, the case should be taken up foraction as soon as possible.

II. OPTIONS AS TO WHICH ACTION TO ISSUE

(A) Right of Appeal Notice - Where no 37 CFR1.951(a) submission has been filed by the patentowner, or where a submission under 37 CFR1.951(a) (and 37 CFR 1.951(b)) has been filed andthe examiner will not modify his/her position; theexaminer should issue a Right of Appeal Notice(RAN). See MPEP § 2673.02. If the patent owner’ssubmission included a proposed amendment, theRAN will indicate whether or not it was entered.

Where a submission has been filed under 37 CFR1.951(a) (or 37 CFR 1.951(b)) and that submissionis incomplete or is defective, the examiner shouldnotify the parties, in the RAN, that the submissionhas not been considered, and that no additional

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opportunity is available to correct the defect(s) inthe submission, because 37 CFR 1.951(a) and (b)provide that comments may only be filed “once.”

(B) Office action reopening of prosecution - SeeMPEP § 2673.01 for a discussion of when theexaminer should issue an action reopeningprosecution.

III. ACTION TAKEN BY EXAMINER

It should be kept in mind that a patent owner cannot,as a matter of right, amend claims rejected in theACP, add new claims after an ACP, nor reinstatepreviously canceled claims. A showing under 37CFR 1.116(b) is required and will be evaluated bythe examiner for all proposed amendments after theACP, except where an amendment merely cancelsclaims, adopts examiner’s suggestions, removesissues for appeal, or in some other way requires onlya cursory review by the examiner.

Where the entry of the proposed amendment (afterthe ACP) would result in any ground of rejectionbeing withdrawn or any additional claim indicatedas patentable, the proposed amendment generallyraises new issues requiring more than cursory reviewby the examiner. The examiner would need toindicate new grounds for patentability for any claimnewly found patentable and/or the reason why therejection was withdrawn and would also need to dealwith any third party requester’s comments on theproposed amendment (made pursuant to 37 CFR1.951(b) in response to owner’s proposedamendment). Thus, the examiner is not required toenter the proposed amendment.

In view of the fact that the patent owner cannotcontinue the proceeding by refiling under 37 CFR1.53(b) or 1.53(d) nor by filing a Request forContinued Examination under 37 CFR 1.114, theexaminer should consider the feasibility of enteringa proposed amendment paper, where the entirety ofthe amendment would result only in an additionalclaim (or claims) being indicated as patentable. Theexaminer is encouraged to enter such an amendmentunless the entry would cause an “undue burden” onthe examiner. Where the examiner does not enterthe amendment, the examiner should explain the“undue burden.” Where the examiner does enter theamendment, see MPEP § 2673.01 as to whether a

Right of Appeal Notice (RAN) can be issued orwhether there is a need to reopen prosecution.

Where multiple amendments are submitted after theACP, all amendments except for the first one willbe returned without consideration, since they areimproper submissions. Thus, if prosecution isreopened, only the first amendment will be presentfor entry.

An amendment filed at any time after the ACP andprior to the RAN may be entered (where appropriatefor entry). An amendment filed after the RAN willnot be entered at all, in the absence of a grantablepetition under 37 CFR 1.183 because 37 CFR1.953(c) prohibits an amendment after the RAN in inter partes reexamination. If the examiner wishesto have the patent owner provide an amendment afterthe RAN, the examiner can reopen prosecution, enterthe amendment, and issue a new ACP.

Where a proposed amendment is not entered, theexaminer will provide a detailed explanation of thereasons for not entering the proposed amendment.For example, if the claims as amended would presenta new issue requiring further consideration or search,the new issue should be identified, and anexplanation provided as to why a new search isnecessary and/or why more than nominalconsideration is necessary.

Affidavits submitted after an ACP are subject to thesame treatment as amendments submitted after anACP. This is analogous to the treatment of affidavitssubmitted after a final rejection in an application.See In re Affidavit Filed After Final Rejection, 152USPQ 292, 1966 C.D. 53 (Comm’r Pat. 1966).

The parties to the reexamination will be notified inthe RAN, or the Office action issued in lieu of theRAN (e.g., action reopening prosecution), as towhether the proposed amendment will be entered orwill not be entered.

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2673.01 Reopening Prosecution After ACP[R-08.2012]

I. MANDATORY REOPENING

Where a submission after Action ClosingProsecution (ACP) has been filed pursuant 37 CFR1.951(a) (and 37 CFR 1.951(b)) and the examinerdecides to modify his/her position, the examinershould ordinarily reopen prosecution, in accordancewith the following guidelines.

The patent owner must be given an opportunity toadequately address any change in position adverseto the patent owner’s position. A Right of AppealNotice (RAN) cannot be issued until the patentowner has had the opportunity to address each andevery rejection prior to the appeal stage. Thus, theexaminer should reopen prosecution where any newground of rejection is made or any additional claimis rejected.

Prosecution is ordinarily reopened in this situationby issuing a non-ACP action, i.e., an Office actionprior to the ACP stage. If prosecution were reopenedat the ACP stage, the patent owner loses rights as toamending the claims in response to the change inthe examiner’s position, because the patent owner’samendment rights are limited after ACP, see MPEP§ 2673.

As opposed to the examiner making a new groundof rejection, if a new finding of patentability is made(i.e., a ground of rejection is withdrawn or anadditional claim is indicated as patentable),prosecution need not be reopened. The third partyrequester has no right to comment on and address afinding of patentability made during thereexamination proceeding until the appeal stage,unless the patent owner responds (after which thethird party requester may file comments). Thus, thethird party requester may address any new findingof patentability at the appeal stage in the samemanner that it would address a finding ofpatentability made during the reexaminationproceeding where the patent owner does not respond(e.g., all claims are allowed on the first Office actionand the patent owner sees no reason to respond).

II. DISCRETIONARY REOPENING

In addition to the above situation which requires reopening of prosecution, the examiner should beliberal in reopening prosecution where the equitiesof the situation make such appropriate, becausepatent owner cannot continue the proceeding byrefiling under 37 CFR 1.53(b) or 1.53(d), nor byfiling a Request for Continued Examination under37 CFR 1.114.

An example of this would be as follows. Patentowner might submit an amendment after the ACPwhich would make at least one claim patentable,except for one or two minor changes needed toobviate a rejection. The examiner cannot telephonethe owner to obtain the minor change(s) and thenissue a RAN because interviews are not permittedin an inter partes reexamination proceeding. Also,the examiner cannot make the changes by issuingan examiner’s amendment coupled with a Notice ofIntent to Issue Inter Partes ReexaminationCertificate (NIRC) because of the presence of thethird party requester, i.e., the third party requesteris entitled to a RAN so that the claims foundpatentable can be appealed. Yet, in this situation, itwould be inequitable to send the claims to appealbased on the minor points that could be easilycorrected. Accordingly, the examiner would reopenprosecution (since 37 CFR 1.953 requires reopeningwhere a RAN is not issued) and issue a new ACPsuggesting the amendment which will make theclaims patentable. The third party requester wouldthen have an opportunity to comment on thenewly-found-patentable claims after the patent ownersubmits the suggested amendment pursuant to 37CFR 1.951(a).

See MPEP § 2673 for a discussion of the examinernot exercising his/her discretion to reopenprosecution in those situations where an “undueburden” on the Office would result if prosecutionwere reopened.

2673.02 Examiner Issues Right of AppealNotice (RAN) [R-11.2013]

37 CFR 1.953 Examiner’s Right of Appeal Notice in interpartes reexamination.

(a) Upon considering the comments of the patent ownerand the third party requester subsequent to the Office action

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closing prosecution in an inter partes reexamination, or uponexpiration of the time for submitting such comments, theexaminer shall issue a Right of Appeal Notice, unless theexaminer reopens prosecution and issues another Office actionon the merits.

(b) Expedited Right of Appeal Notice: At any time afterthe patent owner’s response to the initial Office action on themerits in an inter partes reexamination, the patent owner andall third party requesters may stipulate that the issues areappropriate for a final action, which would include a finalrejection and/or a final determination favorable to patentability,and may request the issuance of a Right of Appeal Notice. Therequest must have the concurrence of the patent owner and allthird party requesters present in the proceeding and must identifyall of the appealable issues and the positions of the patent ownerand all third party requesters on those issues. If the examinerdetermines that no other issues are present or should be raised,a Right of Appeal Notice limited to the identified issues shallbe issued.

(c) The Right of Appeal Notice shall be a final action,which comprises a final rejection setting forth each ground ofrejection and/or final decision favorable to patentabilityincluding each determination not to make a proposed rejection,an identification of the status of each claim, and the reasons fordecisions favorable to patentability and/or the grounds ofrejection for each claim. No amendment can be made in responseto the Right of Appeal Notice. The Right of Appeal Notice shallset a one-month time period for either party to appeal. If nonotice of appeal is filed, prosecution in the inter partes reexamination proceeding will be terminated, and the Directorwill proceed to issue and publish a certificate under § 1.997 inaccordance with the Right of Appeal Notice.

A Right of Appeal Notice (RAN) is a final Officeaction which presents a final decision to reject theclaims (i.e., a final decision that the claims arerejected) and/or a final decision favorable topatentability as to the claims (i.e., a final decisionnot to make a proposed rejection).

The RAN will identify the status of each claim. Itwill set forth:

(A) the grounds of rejection for all claimsrejected in the RAN;

(B) the reasons why a proposed rejection is notmade for all decisions favorable to patentability asto claims that were contested by the third partyrequester; and

(C) the reasons for patentability for all claims“allowed” and not contested by the third partyrequester.

The RAN will also advise parties of their rights ofappeal at this stage in the reexamination proceeding,and the consequences of failure to appeal.

See MPEP § 2673 as to matters that should be takeninto account by the examiner before deciding to issuea RAN. Before the examiner actually issues a RAN,all outstanding grounds of rejection of record andfindings of patentability that are of record should becarefully reviewed, after consideration of allsubmissions of record by the parties. Where it isappropriate to retain the grounds of rejection andfindings of patentability, and the examiner’s positionwill not be changed, the examiner is permitted toissue a RAN. Any grounds of rejection and findingsof patentability relied upon should be restated in theRAN. The reasons for each rejection and findingshould be set forth in detail. The grounds of rejectionand findings of patentability should, at this point, beclearly developed to such an extent that the patentowner and the third party requester may readilyjudge the advisability of filing an appeal. Theexaminer’s position as to any arguments andcomments raised by the patent owner and the thirdparty requester should be clearly set forth, so thatany appeal taken can address the examiner’s positionas to the arguments and comments.

In the RAN, it should also be point out whichsubmissions after the Action Closing Prosecution(ACP) have been entered and considered, and whichhave not. At this point, the examiner should checkthe record to ensure that parties have been madeaware of which amendments, evidence (affidavits,declarations, exhibits, etc.), references and argumentare before the examiner for consideration. The caseshould be ready for appeal after the RAN issues.

In the event that an amendment submitted by thepatent owner after the ACP has not been enteredbecause the amendment does not comply with therequirements of 37 CFR 1.116 (see 37 CFR1.951(a)), the patent owner may file a petition under37 CFR 1.181 requesting entry of the amendment.The petition under 37 CFR 1.181 must be filedwithin the time period for filing a notice of appealor cross appeal, if appropriate (see 37 CFR 1.953(c)).Note that the filing of a petition under 37 CFR 1.181does not toll the time period for filing a notice ofappeal or cross appeal, if appropriate. Thus, inaddition to the petition under 37 CFR 1.181, thepatent owner is encouraged to file (1) a petitionunder 37 CFR 1.183 requesting waiver of theprohibition of an extension of time for filing an

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appeal brief (37 CFR 41.66(a)), and (2) a request foran extension of the period to file the appeal briefuntil after a decision on the petition under 37 CFR1.181. The third party requester may once filecomments responsive to the patent owner’s petitionunder 37 CFR 1.181 within 30 days from the dateof service of the patent owner’s petition under 37CFR 1.181 on the third party requester. Whenrendering a decision on the petition under 37 CFR1.181, the deciding official should be mindful thata patent owner in an inter partes reexaminationproceeding may not be able to proceed effectivelyif the amendment submitted after the ACP is notentered since the patent owner in an inter partes reexamination proceeding does not have the right tocontinue the proceeding by refiling under 37 CFR1.53(b) or 1.53(d) nor by filing a Request forContinued Examination under 37 CFR 1.114, andthe patent owner cannot file an inter partesreexamination.

Form PTOL-2066 should be used as the cover sheetfor the RAN. The RAN should conclude with formparagraph 26.08 advising the parties of their rightto appeal and correspondence and inquiry formparagraph 26.73:

¶ 26.08 Right of Appeal Notice

This is a RIGHT OF APPEAL NOTICE (RAN); see MPEP§ 2673.02 and § 2674. The decision in this Office action as tothe patentability or unpatentability of any original patent claim,any proposed amended claim and any new claim in thisproceeding is a FINAL DECISION.

No amendment can be made in response to the Right of AppealNotice in an inter partes reexamination. 37 CFR 1.953(c).Further, no affidavit or other evidence can be submitted in aninter partes reexamination proceeding after the right of appealnotice, except as provided in 37 CFR 1.981 or as permitted by37 CFR 41.77(b)(1). 37 CFR 1.116(f).

Each party has a thirty-day or one-month time period,whichever is longer, to file a notice of appeal. The patent ownermay appeal to the Board with respect to any decision adverseto the patentability of any original or proposed amended or newclaim of the patent by filing a notice of appeal and paying thefee set forth in 37 CFR 41.20(b)(1). The third party requestermay appeal to the Board with respect to any decision favorableto the patentability of any original or proposed amended or newclaim of the patent by filing a notice of appeal and paying thefee set forth in 37 CFR 41.20(b)(1).

In addition, a patent owner who has not filed a notice of appealmay file a notice of cross appeal within fourteen days of serviceof a third party requester’s timely filed notice of appeal and pay

the fee set forth in 37 CFR 41.20(b)(1). A third party requesterwho has not filed a notice of appeal may file a notice of crossappeal within fourteen days of service of a patent owner’stimely filed notice of appeal and pay the fee set forth in 37 CFR41.20(b)(1).

Any appeal in this proceeding must identify the claim(s)appealed, and must be signed by the patent owner (for a patentowner appeal) or the third party requester (for a third partyrequester appeal), or their duly authorized attorney or agent.

Any party that does not file a timely notice of appeal or a timelynotice of cross appeal will lose the right to appeal from anydecision adverse to that party, but will not lose the right to filea respondent brief and fee where it is appropriate for that partyto do so. If no party files a timely appeal, the reexaminationprosecution will be terminated, and the Director will proceedto issue and publish a certificate under 37 CFR 1.997 inaccordance with this Office action.








P.O. Box 1450


By FAX to: (571) 273-9900



Randolph Building

401 Dulany Street


For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i)(C) and (ii)states that correspondence (except for a request forreexamination and a corrected or replacement request for

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reexamination) will be considered timely filed if (a) it istransmitted via the Office's electronic filing system in accordancewith 37 CFR 1.6(a)(4), and (b) includes a certificate oftransmission for each piece of correspondence stating the dateof transmission, which is prior to the expiration of the set periodof time in the Office action.


Examiner Note:



An amendment filed after the RAN will not beentered at all, in the absence of a grantable petitionunder 37 CFR 1.183, because 37 CFR 1.953(c)prohibits an amendment after the RAN in an interpartes reexamination. If the examiner wishes to havethe patent owner provide an amendment after theRAN, the examiner can reopen prosecution, acceptthe amendment (for entry), and issue a new ActionClosing Prosecution (ACP). See MPEP § 2673.01for discussion as to discretionary reopening ofprosecution.

Note that 37 CFR 1.116(d)(1) states that noamendment other than canceling claims, where suchcancellation does not affect the scope of any otherpending claims in the proceeding, can be made inan inter partes reexamination proceeding after theRAN except as provided in 37 CFR 1.981 or aspermitted by 37 CFR 41.77(b)(1). Furthermore, noaffidavit or other evidence can be submitted in aninter partes reexamination proceeding after the RANexcept as provided in 37 CFR 1.981 or as permittedby 37 CFR 41.77(b)(1). See 37 CFR 1.116(f).

I. EXAMINER NEVER ISSUES A NIRC AFTERACP

Once an ACP has been issued, there is norequirement for the patent owner to respond; wherethe patent owner does not respond to the rejectionof the patent claims, a RAN will still be issued andthe patent owner can appeal at that point to theBoard. Because there is no requirement for the patentowner to respond, there is no situation in which aNotice of Intent to Issue Inter Partes Reexamination

Certificate (NIRC) can be issued after an ACP andprior to the RAN. Even if (after an ACP has beenissued) the examiner finds the patent owner’ssubsequent argument to be persuasive as to all ofthe claims, a NIRC would still not be issued, butrather, a RAN would be issued to provide the thirdparty requester with an opportunity to appeal the“allowed” claims to the Board.

II. EXPEDITED RIGHT OF APPEAL NOTICE

37 CFR 1.953(b) provides for an expedited RAN.At any time after the patent owner’s response to thefirst Office action on the merits in an inter partesreexamination, the patent owner and the third partyrequester (all third party requesters, if there is morethan one due to a merged proceeding) may requestthe immediate issuance of a RAN.

The request for an expedited RAN must:

(A) stipulate that the issues are appropriate fora final action, which would include a final rejectionand/or a final determination favorable topatentability;

(B) state that the patent owner and the third partyrequester (all third party requesters, if there is morethan one) join in making the request;

(C) identify all of the appealable issues; and

(D) identify and discuss the positions of thepatent owner and the third party requester(s) on theidentified issues.

If the examiner determines that no other issues arepresent or should be raised in the proceeding, a RANlimited to the identified issues will be issued.

If the examiner determines that other issues are infact present, or that other issues need to be raised inthe proceeding, the examiner should deny therequest, and examination and prosecution willcontinue as if the request had not been submitted.

In no event will the request for an expedited RANbe construed to extend the time for anyresponse/comments due at the time the request ismade.

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III. PANEL REVIEW CONFERENCE

After an examiner has determined that thereexamination proceeding is ready for the RANaction, the examiner will formulate a draftpreliminary RAN action. The examiner will theninform his/her Central Reexamination Unit (CRU)Supervisory Patent Reexamination Specialist (SPRS)or Technology Center (TC) Quality AssuranceSpecialist (QAS) of his/her intent to issue the action.The CRU SPRS/TC QAS will convene a panelreview conference, and the conference members willreview the patentability of the claim(s) pursuant toMPEP § 2671.03. If the conference confirms theexaminer’s preliminary decision to reject and/orallow the claims, the proposed RAN action shall beissued and signed by the examiner, with the two ormore other conferees initialing the action (as“conferee”) to indicate their presence in theconference. If the conference does not confirm theexaminer’s treatment of the claims, the examinerwill reevaluate and issue an appropriate Officeaction.

2674 Appeal in Inter Partes Reexamination[R-10.2019]

35 U.S.C. 315 Appeal.

(a) PATENT OWNER.— The patent owner involved inan inter partes reexamination proceeding under this chapter—

(1) may appeal under the provisions of section 134 andmay appeal under the provisions of sections 141 through 144,with respect to any decision adverse to the patentability of anyoriginal or proposed amended or new claim of the patent; and

(2) may be a party to any appeal taken by a third-partyrequester under subsection (b).

(b) THIRD-PARTY REQUESTER.— A third-partyrequester—

(1) may appeal under the provisions of section 134,and may appeal under the provisions of sections 141 through144, with respect to any final decision favorable to thepatentability of any original or proposed amended or new claimof the patent; and

(2) may, subject to subsection (c), be a party to anyappeal taken by the patent owner under the provisions of section134 or sections 141 through 144.

(c) CIVIL ACTION.— A third-party requester whoserequest for an inter partes reexamination results in an orderunder section 313 is estopped from asserting at a later time, inany civil action arising in whole or in part under section 1338of title 28, the invalidity of any claim finally determined to bevalid and patentable on any ground which the third-partyrequester raised or could have raised during the inter partes

reexamination proceedings. This subsection does not preventthe assertion of invalidity based on newly discovered prior artunavailable to the third-party requester and the Patent andTrademark Office at the time of the inter partes reexaminationproceedings.

37 CFR 1.959 Appeal in inter partes reexamination.

Appeals to the Patent Trial and Appeal Board under 35U.S.C. 134(c) are conducted according to part 41 of this title.

37 CFR 41.61 Notice of appeal and cross appeal to Board.

(a)(1) Upon the issuance of a Right of Appeal Noticeunder § 1.953 of this title, the owner may appeal to the Boardwith respect to the final rejection of any claim of the patent byfiling a notice of appeal within the time provided in the Rightof Appeal Notice and paying the fee set forth in § 41.20(b)(1).

(2) Upon the issuance of a Right of Appeal Noticeunder § 1.953 of this title, the requester may appeal to the Boardwith respect to any final decision favorable to the patentability,including any final determination not to make a proposedrejection, of any original, proposed amended, or new claim ofthe patent by filing a notice of appeal within the time providedin the Right of Appeal Notice and paying the fee set forth in §41.20(b)(1).

(b)(1) Within fourteen days of service of a requester’snotice of appeal under paragraph (a)(2) of this section and uponpayment of the fee set forth in § 41.20(b)(1), an owner who hasnot filed a notice of appeal may file a notice of cross appealwith respect to the final rejection of any claim of the patent.

(2) Within fourteen days of service of an owner’s noticeof appeal under paragraph (a)(1) of this section and uponpayment of the fee set forth in § 41.20(b)(1), a requester whohas not filed a notice of appeal may file a notice of cross appealwith respect to any final decision favorable to the patentability,including any final determination not to make a proposedrejection, of any original, proposed amended, or new claim ofthe patent.

(c) The notice of appeal or cross appeal in the proceedingmust identify the appealed claim(s) and must be signed by theowner, the requester, or a duly authorized attorney or agent.

(d) An appeal or cross appeal, when taken, must be takenfrom all the rejections of the claims in a Right of Appeal Noticewhich the patent owner proposes to contest or from all thedeterminations favorable to patentability, including any finaldetermination not to make a proposed rejection, in a Right ofAppeal Notice which a requester proposes to contest. Questionsrelating to matters not affecting the merits of the invention maybe required to be settled before an appeal is decided.

(e) The time periods for filing a notice of appeal or crossappeal may not be extended.

(f) If a notice of appeal or cross appeal is timely filed butdoes not comply with any requirement of this section, appellantwill be notified of the reasons for non-compliance and given anon-extendable time period within which to file an amendednotice of appeal or cross appeal. If the appellant does not thenfile an amended notice of appeal or cross appeal within the settime period, or files a notice which does not overcome all thereasons for non-compliance stated in the notification of thereasons for non-compliance, that appellant’s appeal or crossappeal will stand dismissed.

2600-114Rev. 10.2019, June 2020


An appeal cannot be taken by parties to thereexamination until a Right of Appeal Notice (RAN)has been issued. Once a RAN has been issued, thepatent owner and any third party requester will have,in accordance with 37 CFR 1.953, a time period ofone month or thirty days (whichever is longer) tofile a notice of appeal (with the fee set forth in 37CFR 41.20(b)(1)). Pursuant to 37 CFR 41.61(e), thetime for filing a notice of appeal may not beextended.

In the event that no party to the reexamination filesa timely notice of appeal, the prosecution of thereexamination proceeding will be terminated, withthe examiner issuing a Notice of Intent to Issue InterPartes Reexamination Certificate (NIRC); seeMPEP § 2687. However, if one of the parties doesfile a notice of appeal within the one month/thirtyday period, an opposing party can enter into theappeal by filing a notice of cross appeal pursuant to37 CFR 41.61(b) within fourteen (14) days fromservice of the first party’s notice of appeal, seeMPEP § 2674.01. Pursuant to 37 CFR 41.61(e), thetime for filing a notice of cross appeal may not beextended.

Note that a requester is not entitled to file an appealor cross appeal for proposed rejections which weredetermined to not raise a substantial new questionof patentability or a reasonable likelihood ofprevailing. Such as decision is final andnonappealable. See 35 U.S.C. 312(c) and 37 CFR1.927.

The procedure for taking appeal is referenced in 37CFR 1.959 and set forth in 37 CFR 41.61.

(A) The notice of appeal must identify theappealed claim(s).

(B) The appeal must be taken from (1) therejection(s) of the claims in the Right of AppealNotice (RAN) which the patent owner proposes tocontest, or (2) the finding(s) of patentability ofclaims in the RAN which the third party requesterproposes to contest. Therefore:

A notice of appeal by the patent owner mustidentify each claim rejected by the examinerthat the patent owner intends to contest;

A notice of appeal by a third party requestermust identify each rejection that waspreviously proposed which the third partyrequester intends to contest. It is notsufficient to merely appeal from theallowance of a claim (i.e., the examiner’sfinding of a claim patentable); the third partyrequester must identify each previouslyproposed rejection to be contested.

(C) The notice of appeal must be signed by thepatent owner or the third party requester, or theirduly authorized attorney or agent.

“Appellant” and “respondent” are defined in 37 CFR41.60. Where the patent owner appeals from therejection of the claims, a third party requesterresponding to the patent owner’s appeal is termedthe respondent as to the rejected claims. Where athird party requester appeals from a favorabledetermination with respect to the claims, the patentowner responding to the third party requester’sappeal is termed the respondent as to the favorabledetermination.

Where a party fails to file a timely notice of appealor notice of cross appeal, that party may no longerfile an appellant brief to appeal a claim determinationadverse to that party.

A party is permitted to file a respondent brief inaccordance with 37 CFR 41.66(b) and 41.68 (withthe fee as required by 37 CFR 41.68(a)), to respondto issues raised by an opposing party’s appellantbrief. The respondent’s brief may include anyarguments previously made of record that supportthe examiner’s finding with respect to any claimaddressed in the opposing party’s appellant brief.See MPEP § 2675.01.

Where a notice of appeal or notice of cross appealis timely filed but is defective, e.g., missing fee ormissing portion of the fee, no proof of service isincluded, it is signed by an inappropriate party or isunsigned, failure to identify the appealed claims;37 CFR 41.61(f) provides the appropriate party oneopportunity to file, within a nonextendable periodof one month, an amended notice of appeal or crossappeal that corrects the defect(s). Form PTOL-2067should be used to provide the notification.

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Where a notice of appeal or notice of cross appealis filed before a RAN has been issued, theappropriate party will be notified in writing that theappeal is not acceptable. The paper will be placedin the file but it will not be considered at all in theproceeding, other than to inform the party that theappeal is not acceptable.

It should be noted that under 37 CFR 41.63(a),amendments filed after the date of filing an appeal(under 37 CFR 41.61) canceling claims may beadmitted, where such cancellation does not affectthe scope of any other pending claim in theproceeding. However, as to all other amendmentsfiled after the date of filing an appeal, 37 CFR41.63(b) states that such amendments will not beadmitted except as permitted where the patent ownertakes action for reopening prosecution under 37 CFR41.77(b)(1). Also, under 37 CFR 41.63(c), affidavits,declarations, or exhibits submitted after the date offiling an appeal will not be admitted except aspermitted by reopening prosecution under 37 CFR41.77(b)(1).

Effective August 17, 2010, the Board was delegatedthe sole responsibility for determining whetherappeal briefs (i.e., appellant’s brief, respondent’sbrief, and rebuttal briefs) filed in inter partes reexamination proceedings comply with 37 CFR1.943(c) and 37 CFR 41.67, 41.68, or 41.71. TheBoard completes the determination before the appealbriefs are forwarded to the examiner forconsideration. If the appeal brief is determined to becompliant with the rules or it contains only minorinformalities that do not affect the Board panel’sability to render a decision, the Board will acceptthe appeal brief and forward it to the examiner forconsideration. If the Board determines that the appealbrief is non-compliant with the rules and sends theparty a notice of non-compliant brief requiring acorrected brief, the party will be required to file acorrected brief within the time period set forth in thenotice to avoid the dismissal of the appeal. TheBoard will also have the sole responsibility fordetermining whether corrected briefs comply with37 CFR 1.943(c) and 41.67,41.68, or 41.71, and willaddress any inquiries and petitions regarding pagelimits for briefs, entry of briefs or notices ofnon-compliant briefs.

Once an appeal brief is accepted by the Board, theappeal brief will not later be held as defective by theCRU or the examiner. The Board will not return orremand the proceeding to the examiner for issuesrelated to a non-compliant appeal brief. Furthermore,examiners are not required to review appeal briefsfor the purposes of determining whether the appealbriefs comply with 37 CFR 1.943(c) and 41.67,41.68, or 41.71. Accordingly, the Inter PartesReexamination Notification re Brief (PTOL-2073)and form paragraphs for holding an appeal briefdefective are no longer available for the ExaminingCorps to use.

The revised procedure for appeal brief review tookeffect on August 17, 2010, regardless of the date onwhich the appeal brief is filed or forwarded to theexaminer for consideration. Examiners should nolonger hold any appeal briefs defective includingthose appeal briefs that are already on the examiners'dockets, because they have already been reviewedand accepted. Furthermore, the Board willcorrespond directly with the parties onnon-compliant brief issues.

The responsibility of the Board for determiningwhether appeal briefs comply with the appropriaterules is not considered a transfer of jurisdiction whenan appeal brief is filed, but rather is only a transferof the specific responsibility of notifying parties ofthe reasons for non-compliance. The CRU retainsthe jurisdiction over the reexamination proceedingto consider the appeal briefs, conduct an appealconference, draft an examiner’s answer, and decidethe entry of amendments, evidence, and informationdisclosure statements filed after the Right of AppealNotice (RAN) or after the filing of a notice of appeal.Furthermore, petitions concerning the refusal to enteramendments and/or evidence remain delegatedaccording to MPEP §§ 1002.02(b) and (c). Thejurisdiction of the inter partes reexaminationproceeding is transferred to the Board when adocketing notice is entered after the time period forfiling the last rebuttal brief (if appropriate) expiresor the examiner acknowledges the receipt and entryof the last rebuttal brief.

2674.01 Cross Appeal After Original Appeal[R-11.2013]

37 CFR 41.61 Notice of appeal and cross appeal to Board.

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*****

(b)(1) Within fourteen days of service of a requester’snotice of appeal under paragraph (a)(2) of this section and uponpayment of the fee set forth in § 41.20(b)(1), an owner who hasnot filed a notice of appeal may file a notice of cross appealwith respect to the final rejection of any claim of the patent.

(2) Within fourteen days of service of an owner’s noticeof appeal under paragraph (a)(1) of this section and uponpayment of the fee set forth in § 41.20(b)(1), a requester whohas not filed a notice of appeal may file a notice of cross appealwith respect to any final decision favorable to the patentability,including any final determination not to make a proposedrejection, of any original, proposed amended, or new claim ofthe patent.

*****

The cross appeal provision of 37 CFR 41.61(b)permits a party to the reexamination to wait and seeif an opposing party will appeal, before committingto the appeal process.

Within fourteen days of service of a third partyrequester’s notice of appeal, a patent owner who hasnot filed a notice of appeal, may file a notice of crossappeal, the cross appeal being with respect to anyfinal decision (i.e., decision in the RAN) adverse tothe patentability of any claim of the patent. Pursuantto 37 CFR 41.61(e), the time for filing the patentowner’s notice of cross appeal may not be extended.

Within fourteen days of service of a patent owner’snotice of appeal, a third party requester who has notfiled a notice of appeal may file a notice of crossappeal, the cross appeal being with respect to anyfinal decision (i.e., decision in the RAN) favorableto the patentability of any claim of the patent.Pursuant to 37 CFR 41.61(e), the time for filing therequester’s notice of cross appeal may not beextended.

Where the notice of cross appeal is timely filed butis defective, e.g., missing fee or missing portion ofthe fee, no proof of service, signed by aninappropriate party or unsigned, failure to identifythe appealed claims; 37 CFR 41.61(f) provides theappropriate party one opportunity to file, within anon-extendable period of one month, an amendednotice of cross appeal that corrects the defect(s).

Where there are more than two parties to theproceeding, i.e., the patent owner and more than one inter partes third party requester in a merged

proceeding, then a third party cross appeal must befiled within fourteen days of service of a patentowner’s notice of appeal. If a first third partyrequester filed an appeal later than the patent owner’sappeal, then the second third party requester’s timefor cross appeal runs from the earlier-in-time patentowner appeal, not from the later-in-time firstrequester appeal.

In addition, 37 CFR 41.61(b) only provides for across appeal from a “notice of appeal,” not from a“notice of cross appeal.” Thus, if the patent ownerfiles a notice of cross appeal after the original onemonth/thirty days period for appeal has expired, butwithin the fourteen days of a first requester’s appeal(which was filed within the original period); a secondthird party requester does not have fourteen daysfrom the patent owner’s cross appeal. In such asituation, the time for the second requester to appeal(the original one month/thirty days) has expired andthe second requester cannot appeal.

The content of a notice of cross appeal is the sameas that for a notice of appeal, except that the noticeof cross appeal is titled as such and identifies theoriginal appeal from which the cross appeal is taken.Where a party inadvertently fails to title or identifya notice of cross appeal as such (i.e., the format foran original appeal is used), in an appeal filed afterthe original one month/thirty days has expired butbefore the “fourteen days” have expired, theexaminer will construe the notice of appeal as thefiling of a notice of cross appeal timely filed withinthe fourteen days.

2675 Appellant Brief [R-07.2015]

37 CFR 41.66 Time for filing briefs.

(a) An appellant’s brief must be filed no later than twomonths from the latest filing date of the last-filed notice ofappeal or cross appeal or, if any party to the proceeding isentitled to file an appeal or cross appeal but fails to timely doso, no later than two months from the expiration of the time forfiling (by the last party entitled to do so) such notice of appealor cross appeal. The time for filing an appellant’s brief or anamended appellant’s brief may not be extended.

*****

37 CFR 41.67 Appellant’s brief.

(a)(1) Appellant(s) may once, within time limits forfiling set forth in § 41.66, file a brief and serve the brief on allother parties to the proceeding in accordance with § 1.903 ofthis title.

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(2) The brief must be signed by the appellant, or theappellant’s duly authorized attorney or agent and must beaccompanied by the requisite fee set forth in § 41.20(b)(2).

(b) An appellant’s appeal shall stand dismissed upon failureof that appellant to file an appellant’s brief, accompanied by therequisite fee, within the time allowed under § 41.66(a).

(c)(1) The appellant’s brief shall contain the followingitems under appropriate headings and in the order indicated inparagraphs (c)(1)(i) through (c)(1)(xi) of this section.

(i) Real party in interest. A statement identifyingby name the real party in interest.

(ii) Related appeals, interferences, and trials. Astatement identifying by application, patent, appeal orinterference number all other prior and pending appeals,interferences or judicial proceedings known to appellant, theappellant’s legal representative, or assignee which may be relatedto, directly affect or be directly affected by or have a bearingon the Board’s decision in the pending appeal. Copies of anydecisions rendered by a court or the Board in any proceedingidentified under this paragraph must be included in an appendixas required by paragraph (c)(1)(xi) of this section.

(iii) Status of claims. A statement of the status ofall the claims in the proceeding (e.g., rejected, allowed orconfirmed, withdrawn, objected to, canceled). If the appellantis the owner, the appellant must also identify the rejected claimswhose rejection is being appealed. If the appellant is a requester,the appellant must identify the claims that the examiner hasmade a determination favorable to patentability, whichdetermination is being appealed.

(iv) Status of amendments. A statement of thestatus of any amendment filed subsequent to the close ofprosecution.

(v) Summary of claimed subject matter. A conciseexplanation of the subject matter defined in each of theindependent claims involved in the appeal, which shall refer tothe specification by column and line number, and to thedrawing(s), if any, by reference characters. For each independentclaim involved in the appeal and for each dependent claimargued separately under the provisions of paragraph (c)(1)(vii)of this section, every means plus function and step plus functionas permitted by 35 U.S.C. 112(f), must be identified and thestructure, material, or acts described in the specification ascorresponding to each claimed function must be set forth withreference to the specification by page and line number, and tothe drawing, if any, by reference characters.

(vi) Issues to be reviewed on appeal. A concisestatement of each issue presented for review. No new groundof rejection can be proposed by a third party requester appellant,unless such ground was withdrawn by the examiner during theprosecution of the proceeding, and the third party requester hasnot yet had an opportunity to propose it as a third party requesterproposed ground of rejection.

(vii) Argument. The contentions of appellant withrespect to each issue presented for review in paragraph (c)(1)(vi)of this section, and the basis therefor, with citations of thestatutes, regulations, authorities, and parts of the record reliedon. Any arguments or authorities not included in the briefpermitted under this section or §§ 41.68 and 41.71 will be

refused consideration by the Board, unless good cause is shown.Each issue must be treated under a separate heading. If theappellant is the patent owner, for each ground of rejection inthe Right of Appeal Notice which appellant contests and whichapplies to two or more claims, the claims may be arguedseparately or as a group. When multiple claims subject to thesame ground of rejection are argued as a group by appellant,the Board may select a single claim from the group of claimsthat are argued together to decide the appeal with respect to thegroup of claims as to the ground of rejection on the basis of theselected claim alone. Notwithstanding any other provision ofthis paragraph, the failure of appellant to separately argue claimswhich appellant has grouped together shall constitute a waiverof any argument that the Board must consider the patentabilityof any grouped claim separately. Any claim argued separatelyshould be placed under a subheading identifying the claim bynumber. Claims argued as a group should be placed under asubheading identifying the claims by number. A statement whichmerely points out what a claim recites will not be consideredan argument for separate patentability of the claim.

(viii) Claims appendix. An appendix containinga copy of the claims to be reviewed on appeal.

(ix) Evidence appendix. An appendix containingcopies of any evidence submitted pursuant to §§ 1.130, 1.131,or 1.132 of this title or of any other evidence entered by theexaminer and relied upon by appellant in the appeal, along witha statement setting forth where in the record that evidence wasentered in the record by the examiner. Reference to unenteredevidence is not permitted in the brief. See § 41.63 for treatmentof evidence submitted after appeal. This appendix may alsoinclude copies of the evidence relied upon by the examiner inany ground of rejection to be reviewed on appeal.

(x) Related proceedings appendix. An appendixcontaining copies of decisions rendered by a court or the Boardin any proceeding identified pursuant to paragraph (c)(1)(ii) ofthis section.

(xi) Certificate of service. A certification that acopy of the brief has been served in its entirety on all otherparties to the reexamination proceeding. The names andaddresses of the parties served must be indicated.

(2) A brief shall not include any new or non-admittedamendment, or any new or non-admitted affidavit or otherevidence. See § 1.116 of this title for amendments, affidavits orother evidence filed after final action but before or on the samedate of filing an appeal and § 41.63 for amendments, affidavitsor other evidence after the date of filing the appeal.

(d) If a brief is filed which does not comply with all therequirements of paragraph (a) and paragraph (c) of this section,appellant will be notified of the reasons for non-compliance andgiven a non-extendable time period within which to file anamended brief. If appellant does not file an amended brief withinthe set time period, or files an amended brief which does notovercome all the reasons for non-compliance stated in thenotification, that appellant’s appeal will stand dismissed.

In order to file an appellant brief, it is necessary tohave first filed a timely and proper notice of appealor notice of cross appeal; see MPEP §§ 2674 and

2600-118Rev. 10.2019, June 2020


2674.01. Each party that filed a timely and propernotice of appeal or notice of cross appeal must thenfile its appellant brief with fee (set forth in 37 CFR41.20(b)(2)) by the later of the following periods:

(A) no later than two months from the date ofthe last-filed notice of appeal or cross appeal; or

(B) if a patent owner or third party requester isentitled to file an appeal or cross appeal but fails totimely do so, no later than two months from theexpiration of the time for filing (by the last partyentitled to do so) such notice of appeal or crossappeal. Note that a party is not always entitled tofile an appeal or cross appeal. See MPEP §§ 2674and 2674.01.

The time for filing an appellant brief may not beextended. 37 CFR 41.66(a).

Pursuant to 37 CFR 41.67(d), if a brief is filed whichdoes not comply with all the requirements of 37 CFR41.67(a) and (c), appellant will be notified and givena nonextendable period of one month within whichto file an amended brief to correct the defect(s).Failure to timely file the appellant brief and feewithin the time allowed will result in dismissal ofthe appeal of the party that failed to take the timelyaction. Note that if an appellant brief is late, or if anamended appellant brief is not submitted after arequirement to correct the defect(s), the respondentbrief will be placed in the file; however, it will bemarked as “not entered” since it is not formallyreceived into the record, and it will not beconsidered. The same is true for an amendedappellant brief which is late.

Where all parties who filed an appeal or cross appealfail to timely file an appellant brief and fee withinthe time allowed, the prosecution of thereexamination proceeding is terminated by a Noticeof Intent to Issue Inter Partes ReexaminationCertificate (NIRC), and a certificate is issuedindicating the status of the claims at the time ofappeal.

The appellant brief, as well as every other paperrelating to an appeal, should indicate the numberof the Central Reexamination Unit (CRU) Art Unitto which the reexamination is assigned and thereexamination control number. When an appellant

brief is received, it is scanned and then entered intothe file by the CRU support staff.

A fee as set forth in 37 CFR 41.20(b)(2) is requiredwhen the appellant brief is filed for the first time ina particular reexamination proceeding, 35 U.S.C.41(a). 37 CFR 41.67(c)(1) requires that the appellantshall provide, in the appellant brief, the authoritiesand arguments on which the appellant will rely tomaintain the appeal, a concise explanation of subjectmatter defined in each of the independent claimsinvolved in the appeal which explanation must referto the specification by column and line number (andto the drawing, if any, by reference characters), anevidence appendix, a related proceedings appendix,and a copy of the claims involved. The copy of theclaims (involved in the appeal) required in the claimappendix by 37 CFR 41.67(c)(1)(viii) should be aclean copy. The clean copy must include allbrackets and underlining as required by 37 CFR1.530(d) et seq.; thus, the copy of the claims onappeal must include all underlining and bracketingnecessary to reflect the changes made to the originalpatent claims throughout the prosecution of thereexamination. In addition, any new claims addedin the reexamination must be completely underlined.For the sake of convenience, the copy of the claimsinvolved should start on a new page, and it shouldbe double spaced.

The provisions of 37 CFR 41.67(c) should becarefully reviewed to ensure that a completeappellant brief is provided. Patent owners arereminded that their briefs in appeal cases must beresponsive to every ground of rejection stated by theexaminer which the patent owner-appellant contests.Third party requesters are reminded that their briefsin appeal cases must be responsive to each examinerdetermination of patentability (determination ofinapplicability of a proposed rejection) which thethird party requester-appellant contests. Oralargument at the hearing will not remedy such adeficiency in the appellant brief.

Where the appellant brief is not complete as to theprovisions of 37 CFR 41.67(a) and (c), appellantwill be notified (in accordance with 37 CFR41.67(d)) and will be given one (1) month to correctthe defect(s) by filing an amended appellant brief.

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Examiners are not required to make anydetermination whether fewer than all of the rejectedclaims are identified by the party as being appealed.If the notice of appeal or appeal brief identifies fewerthan all of the rejected claims as being appealed, theissue will be addressed by the Board panel. Theexaminer will treat all pending claims in theproceeding as being on appeal.

It is essential that the Board should be provided witha brief fully stating the position of the appellant withrespect to each issue involved in the appeal so thatno search of the record is required in order todetermine that position. The fact that appellant mayconsider a ground or determination to be clearlyimproper does not justify a failure on the part of theappellant to point out to the Board the argument,i.e., reasons, for that view. A distinction must bemade between the lack of any argument and thepresentation of arguments which carry no conviction.In the former case, dismissal is in order, while in thelatter case a decision on the merits is made, althoughit may well be merely an affirmance based on thegrounds or determination relied upon by theexaminer.

Ignoring or acquiescing in any rejection ordetermination, even one based upon formal matterswhich could be corrected by subsequentamendments, will invite a dismissal of the appeal asto the appropriate party. The prosecution of thereexamination proceedings will be consideredterminated as of the date of the dismissal of theappeal of all parties who filed an appeal or crossappeal.

AMENDMENTS, AFFIDAVITS, DECLARATIONS,OR EXHIBITS

Pursuant to 37 CFR 41.67(c)(2), the brief is not toinclude any (A) new or non-admitted (non-entered)amendment, or (B) new or non-admitted(non-entered) affidavit or other evidence.

Pursuant to 37 CFR 41.63:

(A) Amendments filed after the date of filing anappeal (under 37 CFR 41.61) canceling claims maybe admitted, where such cancellation does not affectthe scope of any other pending claim in theproceeding;

(B) All other amendments filed after the date offiling an appeal will not be admitted, except aspermitted where the patent owner takes action forreopening prosecution under 37 CFR 41.77(b)(1);

(C) Affidavits or other evidence filed after thedate of filing an appeal will not be admitted, exceptas permitted where the patent owner takes action forreopening prosecution under 37 CFR 41.77(b)(1).

If the examiner wishes to have the patent ownerprovide an amendment (other than cancellation ofclaims as discussed above) or evidence during theappeal stage, the examiner must (A) reopenprosecution, (B) accept the amendment or evidencefor entry, (C) permit timely comment on the newamendment or evidence by the third party requester,and (D) then issue a new Action Closing Prosecution(ACP). See MPEP § 2673.01.

2675.01 Respondent Brief [R-07.2015]

37 CFR 41.66 Time for filing briefs.*****

(b) Once an appellant’s brief has been properly filed, anybrief must be filed by respondent within one month from thedate of service of the appellant’s brief. The time for filing arespondent’s brief or an amended respondent’s brief may notbe extended.

*****

37 CFR 41.68 Respondent’s brief.

(a)(1) Respondent(s) in an appeal may once, within thetime limit for filing set forth in § 41.66, file a respondent briefand serve the brief on all parties in accordance with § 1.903 ofthis title.

(2) The brief must be signed by the party, or the party’sduly authorized attorney or agent, and must be accompanied bythe requisite fee set forth in § 41.20(b)(2).

(3) The respondent brief shall be limited to issues raisedin the appellant brief to which the respondent brief is directed.

(4) A requester’s respondent brief may not address anybrief of any other requester.

(b)(1) The respondent brief shall contain the followingitems under appropriate headings and in the order here indicated,and may include an appendix containing only those portions ofthe record on which reliance has been made.

(i) Real Party in Interest. A statement identifyingby name the real party in interest.

(ii) Related Appeals, Interferences, and trials. Astatement identifying by application, patent, appeal, interference,or trial number all other prior and pending appeals, interferencesor judicial proceedings known to respondent, the respondent’slegal representative, or assignee which may be related to, directlyaffect or be directly affected by or have a bearing on the Board’s

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decision in the pending appeal. Copies of any decisions renderedby a court or the Board in any proceeding identified under thisparagraph must be included in an appendix as required byparagraph (b)(1)(ix) of this section.

(iii) Status of claims. A statement accepting ordisputing appellant’s statement of the status of claims. Ifappellant’s statement of the status of claims is disputed, theerrors in appellant’s statement must be specified withparticularity.

(iv) Status of amendments. A statement acceptingor disputing appellant’s statement of the status of amendments.If appellant’s statement of the status of amendments is disputed,the errors in appellant’s statement must be specified withparticularity.

(v) Summary of claimed subject matter. Astatement accepting or disputing appellant’s summary of thesubject matter defined in each of the independent claimsinvolved in the appeal. If appellant’s summary of the subjectmatter is disputed, the errors in appellant’s summary must bespecified.

(vi) Issues to be reviewed on appeal. A statementaccepting or disputing appellant’s statement of the issuespresented for review. If appellant’s statement of the issuespresented for review is disputed, the errors in appellant’sstatement must be specified. A counter statement of the issuesfor review may be made. No new ground of rejection can beproposed by a requester respondent.

(vii) Argument. A statement accepting or disputingthe contentions of appellant with each of the issues presentedby the appellant for review. If a contention of the appellant isdisputed, the errors in appellant’s argument must be specified,stating the basis therefor, with citations of the statutes,regulations, authorities, and parts of the record relied on. Eachissue must be treated under a separate heading. An argumentmay be made with each of the issues stated in the counterstatement of the issues, with each counter-stated issue beingtreated under a separate heading.

(viii) Evidence appendix. An appendix containingcopies of any evidence submitted pursuant to §§ 1.130, 1.131,or 1.132 of this title or of any other evidence entered by theexaminer and relied upon by respondent in the appeal, alongwith a statement setting forth where in the record that evidencewas entered in the record by the examiner. Reference tounentered evidence is not permitted in the respondent’s brief.See § 41.63 for treatment of evidence submitted after appeal.

(ix) Related proceedings appendix. An appendixcontaining copies of decisions rendered by a court or the Boardin any proceeding identified pursuant to paragraph (b)(1)(ii) ofthis section.

(x) Certificate of service. A certification that acopy of the respondent brief has been served in its entirety onall other parties to the reexamination proceeding. The namesand addresses of the parties served must be indicated.

(2) A respondent brief shall not include any new ornon-admitted amendment, or any new or non-admitted affidavitor other evidence. See § 1.116 of this title for amendments,affidavits or other evidence filed after final action but before oron the same date of filing an appeal and § 41.63 for amendments,

affidavits or other evidence filed after the date of filing theappeal.

(c) If a respondent brief is filed which does not complywith all the requirements of paragraph (a) and paragraph (b) ofthis section, respondent will be notified of the reasons fornon-compliance and given a non-extendable time period withinwhich to file an amended brief. If respondent does not file anamended respondent brief within the set time period, or files anamended respondent brief which does not overcome all thereasons for non-compliance stated in the notification, therespondent brief and any amended respondent brief by thatrespondent will not be considered.

After an appellant brief has been properly filed, aparty opposing the appellant may file a respondentbrief in support of the claim determination(s) madein the Right of Appeal Notice (RAN) which are infavor of the opposing party. If an appellant brief wasnot properly filed and a notice of non-compliance ismailed to the appellant, the party opposing theappellant may file a respondent brief within onemonth from the date of service of the amendedappellant’s brief filed in response to thenon-compliance notice. The respondent brief must,however, be limited to issues raised in the appellantbrief to which the respondent brief is directed or tothe examiner’s position. 37 CFR 41.68(a)(3). Therespondent’s brief may include any argumentspreviously made of record that support theexaminer’s findings with respect to any claimaddressed in the opposing party’s appellant brief.See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d973, 109 USPQ2d 1599, 1603 (Fed. Cir. 2014)(“Tempo has the right to defend the examiner's finaldecision on any ground supported by the record,”citing Rexnord Indus., LLC v. Kappos, 705 F.3d1347, 1356, 105 USPQ2d 1727 (Fed. Cir. 2013)).

The respondent brief must be accompanied by therequisite fee set forth in 37 CFR 41.20(b)(2), and itmust be filed within one month from the date ofservice of the appellant brief on the opposing party.

Pursuant to 37 CFR 41.66(b), the time for filing arespondent brief may not be extended. If arespondent brief is filed which does not comply withall the requirements of 37 CFR 41.68(a) and (b),respondent will be notified and given anonextendable period of one month within which tofile an amended brief to correct the defect(s). See37 CFR 41.68(c). Failure to timely file a respondentbrief and fee (or failure to timely complete the

Rev. 10.2019, June 20202600-121


respondent brief, where it is noted as beingincomplete under 37 CFR 41.68(c)) will result inthe respondent brief not being considered. Note thatif the respondent brief is late, or if an amendedrespondent brief is not submitted after a requirementto correct the defect(s) (following a timelyrespondent brief), the respondent brief will be placedin the file; however, it will be marked as “notentered” since it is not formally received into therecord, and it will not be considered. The same istrue for an amended respondent brief which is late.

It should be noted that where a party fails to file atimely notice of appeal or notice of cross appeal,that party may no longer file an appellant brief toappeal a claim determination adverse to that party;however, that party is permitted to file a respondentbrief in accordance with 37 CFR 41.66(b).

A fee as set forth in 37 CFR 41.20(b)(2) is requiredwhen the respondent brief is filed for the first timein a particular reexamination proceeding, 35 U.S.C.41(a). The respondent brief should indicate thenumber of the Central Reexamination Unit (CRU)Art Unit to which the reexamination is assigned andthe reexamination control number. A statement ofwhat in the appellant brief is accepted and what isdisputed must be provided in the respondent brief.Respondent must set forth the authorities andarguments upon which he/she will rely to disputethe contentions of the appellant with respect to theissues.

The provisions of 37 CFR 41.68(a) and (b) shouldbe carefully reviewed to ensure that a completerespondent brief is provided. Where the respondentbrief is not complete as to the provisions of 37 CFR41.68(a) and (b), respondent will be notified (inaccordance with 37 CFR 41.68(c)) and will be givena non-extendable period of one month to correct thedefect(s) by filing an amended respondent brief.

2675.02 Informalities in One or More of theBriefs [R-11.2013]

37 CFR 41.67 Appellant’s brief.*****

(d) If a brief is filed which does not comply with all therequirements of paragraph (a) and paragraph (c) of this section,appellant will be notified of the reasons for non-compliance andgiven a non-extendable time period within which to file an

amended brief. If appellant does not file an amended brief withinthe set time period, or files an amended brief which does notovercome all the reasons for non-compliance stated in thenotification, that appellant’s appeal will stand dismissed.

*****

37 CFR 41.68 Respondent’s brief.*****

(c) If a respondent brief is filed which does not complywith all the requirements of paragraph (a) and paragraph (b) ofthis section, respondent will be notified of the reasons fornon-compliance and given a non-extendable time period withinwhich to file an amended brief. If respondent does not file anamended respondent brief within the set time period, or files anamended respondent brief which does not overcome all thereasons for non-compliance stated in the notification, therespondent brief and any amended respondent brief by thatrespondent will not be considered.

Where an appellant or respondent brief does notcomply with all the requirements of 37 CFR 41.67(a)and (c) or 37 CFR 41.68(a) and (b), respectively,such as missing fee or missing portion of the fee, amissing signature, inappropriate signature, less thanthree copies of the brief, no proof of service on aparty; the appropriate party should be notified bythe Board of the reasons for non-compliance andprovided with a nonextendable period of one monthwithin which to file an amended brief. A separatenotification will be sent to each party, where thebrief(s) of more than one party are non-compliantand/or defective. Where the same party’s appellantand respondent briefs are both informal, the Boardmay combine the notifications for both into onenotification paper.

If an appellant does not file an amended appellantbrief during the one-month period, or files anamended brief which does not overcome all thereasons for non-compliance or does not correct alldefects stated in the notification, the appeal willstand dismissed as to that party.

If a respondent does not file an amended respondentbrief during the one-month period, or files anamended brief which does not overcome all thereasons for non-compliance or does not correct alldefects stated in the notification, the respondent briefwill not be formally received into the record and willnot be considered (though it will be placed in thefile).

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Where a party does timely file an amended brief andovercomes all the reasons for non-compliance andcorrects all defects stated in the notification, theamended brief will be entered and will be consideredalong with the original appellant or respondent brief,when the case is taken up by the examiner. After aparty has filed an amended appellant brief correctingthe defect(s), the other party is not permitted to filea responsive amended respondent brief, if theamended appellant brief correcting the defect(s) isdirected to form and does not go to the merits of thecase. This would be the case, for example, wherethe failure to provide a signature or a certificate ofservice is corrected.

2676 Appeal Conference [R-07.2015]

All appellant and respondent briefs will be processedby the Board and the reexamination proceeding thenforwarded to the Central Reexamination Unit (CRU).The CRU will forward the reexamination proceedingto the examiner after all appellant and respondentbriefs have been filed or after the time for filing themhas expired.

As long as at least one timely appellant brief hasbeen filed, the case must be considered for appealby the examiner. The examiner should thenformulate an initial opinion as to whether anexaminer’s answer should be prepared, orprosecution should be reopened and a non-finalOffice action issued.

If the examiner reaches the conclusion that theappeal should go forward and an examiner’s answershould be prepared, the examiner will arrange (viathe CRU Supervisory Patent ReexaminationSpecialist (SPRS) or Technology Center (TC)Quality Assurance Specialist (QAS)) for an appealconference to be conducted pursuant to theprocedures set forth in MPEP § 1207.01. Inpreparing for the appeal conference, the examinershould review the case so that he/she will beprepared to discuss the issues raised in all the briefs.The examiner should be prepared to propose to theconferees how he/she will address each issue raisedin the appellant and respondent briefs. The appealconference will be held in accordance with theprocedures as set forth in MPEP § 1207.01.

If the examiner reaches the conclusion that theappeal should not go forward, no appeal conferenceis held. Prosecution is reopened, and the examinerissues a new non-final Office action.

See MPEP § 2638 for the appropriate code to usefor reporting time spent with respect to the appealconference.

2677 Examiner’s Answer [R-07.2015]

37 CFR 41.69 Examiner’s answer.

(a) The primary examiner may, within such time as directedby the Director, furnish a written answer to the owner’s and/orrequester’s appellant brief or respondent brief including, as maybe necessary, such explanation of the invention claimed and ofthe references relied upon, the grounds of rejection, and thereasons for patentability, including grounds for not adoptingany proposed rejection. A copy of the answer shall be suppliedto the owner and all requesters. If the primary examinerdetermines that the appeal does not comply with the provisionsof §§ 41.61, 41.66, 41.67 and 41.68 or does not relate to anappealable action, the primary examiner shall make suchdetermination of record.

(b) An examiner’s answer may not include a new groundof rejection.

(c) An examiner’s answer may not include a newdetermination not to make a proposed rejection of a claim.

(d) Any new ground of rejection, or any new determinationnot to make a proposed rejection, must be made in an Officeaction reopening prosecution.

Where the term “brief” is used in this section, it shallrefer to any appellant briefs and/or respondent briefsin the reexamination proceeding, unless specificidentification of an “appellant brief” or a “respondentbrief” is made.

Before preparing an examiner’s answer, the examinershould make certain that all amendments approvedfor entry have in fact been physically entered by theCentral Reexamination Unit (CRU). The clerk ofthe Board will return to the CRU any reexaminationproceeding in which approved amendments havenot been entered.

The examiner should furnish each party to thereexamination (even a party that has not filed anappellant nor respondent brief) with a comprehensiveexaminer’s answer that provides a written statementin answer to each appellant brief and each respondentbrief. The examiner’s answer is to be completed bythe examiner within two weeks after the appeal

Rev. 10.2019, June 20202600-123


conference. After the answer is completed (andsigned), the examiner obtains the initials of theappeal conference participants (the conferees) andthen forwards the reexamination file with the answerto the CRU Supervisory Patent ReexaminationSpecialist (SPRS) or Technology Center (TC)Quality Assurance Specialist (QAS). The CRUSPRS/TC QAS reviews the answer, and if the answeris in order, forwards the reexamination file with theanswer to the CRU technical support staff.

The examiner’s answer may incorporate from anyof the briefs the most accurate and mostcomprehensive information. It should contain aresponse to the allegations or arguments made in allof the briefs and should call attention to any errorsin an appellant’s copy of the claims. If a ground ofrejection or reason for patentability is not addressedin the examiner’s answer, the proceeding will beremanded by the Board to the examiner.

The examiner should report his/her conclusions onany affidavits, declarations, or exhibits that wereadmitted to the record. Any affidavits or declarationsin the file swearing behind a patent should be clearlyidentified by the examiner as being consideredunder either 37 CFR 1.131(a) or 37 CFR 41.154(a).The distinction is important since the Board willusually consider holdings on 37 CFR 1.131(a)affidavits or declarations but not holdings on 37 CFR41.154(a) affidavits or declarations in appeal cases.

It sometimes happens that an examiner will state aposition (e.g., reasoning) in the answer in a mannerthat represents a shift from the position stated in theRight of Appeal Notice (RAN). In such a case, theanswer must indicate that the last stated positionsupersedes the former.

If there is a complete and thorough development ofthe issues at the time of the RAN, it is possible tosave time in preparing the examiner’s answer.Examiners may incorporate in the answer theirstatement of the grounds of rejection ordeterminations of patentability merely by referenceto the RAN. The page(s) and paragraph(s) of theRAN which it is desired to incorporate by referenceshould be explicitly identified. If the examiner feelsthat further explanation is necessary, he/she shouldinclude it in the answer. The examiner’s answer

should also include rebuttal of any and all argumentspresented in all of the briefs.

All correspondence with the Board, whether by theexaminer or an appellant or respondent, must be onthe record. No unpublished decisions which areunavailable to the general public by reason of35 U.S.C. 122 can be cited by the examiner or theparties.

The examiner should reevaluate his/her position inthe light of the arguments presented in the briefs,and should expressly withdraw any rejections ordeterminations of patentability not adhered to. Sucha withdrawal would be a new finding of patentability(determination not to make a rejection) or newground of rejection, respectively. Pursuant to 37CFR 41.69(b), an examiner’s answer “may notinclude a new ground of rejection.” Pursuant to 37CFR 41.69(c), an examiner’s answer “may notinclude a new determination not to make a proposedrejection of a claim.” Accordingly, prosecution mustbe reopened for any withdrawal of a rejection or ofa determination of patentability. Before issuing theaction reopening prosecution, the examiner willconsult with his or her CRU SPRS to discuss at whatpoint in the prosecution the prosecution should bereopened, and then the examiner will prepare anappropriate Office action. Note that the examinermay withdraw the Action Closing Prosecution (ACP)and reopen prosecution at any time prior to themailing of the examiner’s answer.

Examiners should no longer hold any appeal briefsdefective including those appeal briefs that arealready on the examiner’s dockets, because theyhave already been reviewed by the Board andaccepted. See MPEP § 2674. In a rare situationwhere an appeal brief contains serious defects thatwill prevent the examiner from drafting anexaminer’s answer, the examiner should report theissue to the Director of CRU who will communicatewith the Board regarding the issue.

In addition, examiners are not required to make anydetermination whether fewer than all of the rejectedclaims are identified by the party as being appealed.If the notice of appeal or appeal brief identifies fewerthan all of the rejected claims as being appealed, theissue will be addressed by the Board panel. The

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examiner will treat all pending claims in theproceeding as being on appeal.

In a situation where at least two adverse parties filedan appeal brief in the inter partes reexaminationproceeding (e.g., the patent owner filed anappellant’s brief and the third-party requester fileda respondent’s brief), most of the time the issueshave been completely developed by the examiner inthe RAN and by both parties in their briefs, andadditional briefing from the examiner is notnecessary for the Board panel to decide the issues.Therefore, examiners may use the new PTOL-2291form (“ Inter Partes Reexamination Examiner’sAnswer”) to incorporate by reference the RANincluding the grounds of rejection and determinationsnot to make a proposed rejection set forth in theRAN, in a proceeding where at least two adverseparties filed an appeal brief. With the approval ofthe CRU Director, examiners may provide additionalexplanation as an attachment to the formPTOL-2291. For situations other than where at leasttwo adverse parties have filed an appeal brief,examiners are encouraged to incorporate in theexaminer’s answer their statements of the groundsof rejection and determinations not to make aproposed rejection set forth in the RAN. Examinersare reminded that no new ground of rejection andno new determination not to make a proposedrejection are permitted in an examiner’s answer.

If the examiner requests to be present at the oralhearing, the request must be set forth in a separateletter as noted in MPEP § 1209.

MPEP §§ 1207 - 1207.05 relate to preparation ofexaminer’s answers on appeal in patent applicationsand ex parte reexamination proceedings.

All examiner’s answers in inter partesreexamination proceedings must comply with theguidelines set forth below.

I. REQUIREMENTS FOR EXAMINER’S ANSWER

The examiner may incorporate from any of the briefsinformation required for the examiner’s answer, asneeded to provide accurate and comprehensiveinformation. The examiner’s answer must include,in the order indicated, the following items. Again,

the term “brief” or “briefs” shall refer to anyappellant briefs and/or respondent briefs in thereexamination proceeding, unless specificidentification of an “appellant brief” or a “respondentbrief” is made.

(A) Real Party in Interest. For each appellantand respondent brief, a statement by the examineracknowledging the identification by name of the realparty in interest.

(B) Related Appeals and Interferences. Astatement identifying by application, patent, appealor interference number all other prior and pendingappeals, interferences or judicial proceedings knownto the examiner which may be related to, directlyaffect or be directly affected by or have a bearingon the Board’s decision in the pending appeal.Copies of any decisions rendered by a court or theBoard in any proceeding identified under thisparagraph should be included in the “RelatedProceedings Appendix” section.

(C) Status of Claims. A statement of whetherthe examiner agrees or disagrees with the statementof the status of claims contained in the briefs. If theexaminer disagrees with the statement of the statusof claims contained in the briefs, the examiner mustset forth a correct statement of the status of all theclaims in the proceeding.

(D) Status of Amendments. A statement ofwhether the examiner agrees or disagrees with thestatement of the status of amendments contained inany of the briefs, and an explanation of anydisagreement with any of the briefs. If there are noamendments, the examiner shall so state.

(E) Summary of Claimed Subject Matter. Astatement of whether the examiner agrees ordisagrees with the summary of claimed subjectmatter contained in the briefs and an explanation ofany disagreement.

(F)(1) Grounds of Rejection to be Reviewedon Appeal. A statement of whether the examineragrees or disagrees with the statement of the groundsof rejection to be reviewed set forth in the briefs andan explanation of any disagreement. In addition, theexaminer must include the following subheadings(and state “None” where appropriate):

(a) “Grounds of Rejection Not OnReview” - a listing of all grounds of rejection thathave not been withdrawn and have not been

Rev. 10.2019, June 20202600-125


presented by an appellant for review in the brief;and

(b) “Non-Appealable Issues” - a listingof any non-appealable issues in the briefs.

(2) Findings of Patentability to be Reviewedon Appeal. A statement of whether the examineragrees or disagrees with the statement of the findingsof patentability to be reviewed set forth in the briefsand an explanation of any disagreement. In addition,the examiner must include the following subheadings(and state “None” where appropriate):

(a) “Findings of Patentability Not OnReview” - a listing of all findings of patentabilitythat have not been presented by an appellant forreview in the brief; and

(b) “Non-Appealable Issues” - a listingof any non-appealable issues raised by the requesterin the briefs.

(G) Claims Appendix. A statement of whetherthe copy of the appealed claims contained in theappendix to the appellant briefs is correct, and if anyclaim is not correct in any of the briefs, a copy ofthe correct claim.

(H) Evidence Relied Upon. A listing of theevidence relied on (e.g., patents, publications,Official Notice, admitted prior art), and, in the caseof nonpatent references, the relevant page or pages.Note that new references cannot be applied in anexaminer’s answer. 37 CFR 41.69(b). If newreferences are to be applied, prosecution must bereopened. Also note that both the art relied upon bythe examiner in making rejections, and the art reliedupon by the third party requester in the proposedrejections, will be listed by the examiner.

(I) Grounds of Rejection. For each ground ofrejection maintained by the examiner applicable tothe appealed claims, an explanation of the groundof rejection.

(1) For each rejection under 35 U.S.C. 112,first paragraph, the examiner’s answer must explainhow the first paragraph of 35 U.S.C. 112 is notcomplied with, including, as appropriate, how thespecification and drawings, if any,

(a) do not describe the subject matterdefined by each of the rejected claims, and

(b) would not enable any person skilledin the art to make and use the subject matter defined

by each of the rejected claims without undueexperimentation including a consideration of theundue experimentation factors set forth in MPEP §2164.01(a).

(2) For each rejection under 35 U.S.C. 112,second paragraph, the examiner’s answer mustexplain how the claims do not particularly point outand distinctly claim the subject matter which“applicant” regards as the invention.

(3) For each rejection under 35 U.S.C. 102,the examiner’s answer must explain why the rejectedclaims are anticipated or not patentable under35 U.S.C. 102, pointing out where all of the specificlimitations recited in the rejected claims are foundin the prior art relied upon in the rejection.

(4) For each rejection under 35 U.S.C. 103,the examiner’s answer must:

(a) state the ground of rejection and pointout where each of the specific limitations recited inthe rejected claims is found in the prior art relied onin the rejection,

(b) identify the differences between therejected claims and the prior art relied on (i.e., theprimary reference), and

(c) explain why it would have beenobvious at the time the invention was made to aperson of ordinary skill in the art to have modifiedthe primary reference to arrive at the claimed subjectmatter.

(5) For each rejection under 35 U.S.C. 102or 103 where there are questions as to howlimitations in the claims correspond to features inthe art even after the examiner complies with therequirements of paragraphs (I)(3) and (4) above, theexaminer must compare at least one of the rejectedclaims feature-by-feature with the art relied upon inthe rejection. The comparison shall align thelanguage of the claim side-by-side with a referenceto the specific page or column, line number, drawingreference number, and quotation from the reference,as appropriate.

(6) For each rejection, other than thosereferred to in paragraphs (I)(1) to (I)(5), theexaminer’s answer must specifically explain thebasis for the particular rejection.

(J) Determinations of Patentability. For eachdetermination of patentability, i.e., each

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determination of inapplicability of a proposedrejection to the appealed claims, a clearexplanation of the determination.

(1) For each determination of inapplicabilityof a proposed rejection of the appealed claims under35 U.S.C. 112, first paragraph; the examiner’sanswer must explain how the first paragraph of 35U.S.C. 112 is complied with, including, asappropriate, how the specification and drawings, ifany, do describe the subject matter defined by eachof the proposed-for-rejection claims, and/or wouldin fact enable a person skilled in the art to make anduse the subject matter defined by each of theproposed-for-rejection claims without undueexperimentation.

(2) For each determination of inapplicabilityof a proposed rejection of the appealed claims under35 U.S.C. 112, second paragraph; the examiner’sanswer must explain how the claims do particularlypoint out and distinctly claim the subject matterwhich “applicant” regards as the invention.

(3) For each determination of inapplicabilityof a proposed rejection of the appealed claims under35 U.S.C. 102; the examiner’s answer must explainwhy the proposed-for-rejection claims are notanticipated and why they are patentable under 35U.S.C. 102, pointing out which limitations recitedin the patentable claims are not found in the art reliedupon by the third party requester for the proposedrejection.

(4) For each determination of inapplicabilityof a proposed rejection of the appealed claims under35 U.S.C. 103; the examiner’s answer must pointout which limitations recited in theproposed-for-rejection claims are not found in theart relied upon by the third party requester for theproposed rejection, shall identify the differencebetween the claims and the art relied upon by thethird party requester and must explain why theclaimed subject matter is patentable over the artrelied on by the third party requester. If the thirdparty requester’s proposed rejection is based upona combination of references, the examiner’s answermust explain the rationale for not making thecombination.

(5) For each rejection proposed under35 U.S.C. 102 or 103 where there are questions asto how limitations in the claims define over featuresin the art even after the examiner complies with the

requirements of paragraphs (J)(3) and (J)(4) above,the examiner must compare at least one of theproposed-for-rejection claims feature-by-featurewith the art relied on in the proposed rejection. Thecomparison must align the language of the claimside-by-side with a reference to the specific page orcolumn, line number, drawing reference number,and quotation from the reference, as appropriate.

(6) For each determination of inapplicabilityof a proposed rejection, other than those referred toin paragraphs (J)(1) to (J)(5), the examiner’s answermust specifically explain why there is insufficientbasis for making that particular proposed rejection.

(K) No New Ground of Rejection or NewFinding of Patentability. The examiner’s answermust provide an explicit statement that it does notcontain any new ground of rejection, and it does notcontain any new finding of patentability (i.e., no newdetermination of inapplicability of a proposedrejection). This statement will serve as a reminderto the examiner that if a new ground of rejection ornew finding of patentability is made, prosecutionmust be reopened. It will also provide appropriatenotification to parties that no new ground of rejectionor new finding of patentability was made.

(L) Response to Argument. A statement ofwhether the examiner disagrees with each of thecontentions of appellants and respondents in theirbriefs with respect to the issues presented, and anexplanation of the reasons for disagreement withany such contentions. If any ground of rejection orinapplicability of proposed rejection is not arguedand responded to by the appropriate party, theexaminer must point out each claim affected.

(M) Related Proceedings Appendix. Copies ofany decisions rendered by a court or the Board inany proceeding identified by the examiner in theRelated Appeals and Interferences section of theanswer.

(N) Period for Providing a Rebuttal Brief. Theexaminer will set forth the period for the appropriateappellant party, or appellant parties, to file a rebuttalbrief after the examiner’s answer, and that no furtherpapers will be permitted subsequent to the rebuttalbrief.

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II. PROCESSING OF COMPLETED ANSWER

When the examiner’s answer is complete, theexaminer will sign it. On the examiner’s answer,each conferee who was present at the appealconference will place his/her initials below thesignature of the examiner who prepared the answer.Thus: “John Smith (conferee)” should be typed, and“JS” should be initialed. (The initialing by theconferee does not necessarily indicate concurrencewith the position taken in the examiner’s answer.)

The CRU technical support staff will mail a copy ofthe examiner’s answer to the patent owner and tothe third party requester(s). The technical supportstaff should attach form PTOL-2070 to the copy ofthe answer to be mailed to the third party requesterby the CRU.

The examiner must prepare the examiner’s answer,ensure that the clerical processing is done, andforward the case to the CRU SPRS/TC QAS.

If an examiner’s answer is believed to contain a newinterpretation or application of the existing patentlaw, the examiner’s answer, the case file, and anexplanatory memorandum should be forwarded tothe CRU Director for consideration. See MPEP§ 1003 which applies to the CRU Director as it doesto TC Directors.

2678 Rebuttal Briefs [R-11.2013]

37 CFR 41.66 Time for filing briefs.*****

(d) Any appellant may file a rebuttal brief under § 41.71within one month of the date of the examiner’s answer. Thetime for filing a rebuttal brief or an amended rebuttal brief maynot be extended.

(e) No further submission will be considered and any suchsubmission will be treated in accordance with § 1.939 of thistitle.

37 CFR 41.71 Rebuttal brief.

(a) Within one month of the examiner’s answer, anyappellant may once file a rebuttal brief.

(b)(1) The rebuttal brief of the owner may be directedto the examiner’s answer and/or any respondent brief.

(2) The rebuttal brief of the owner shall not includeany new or non-admitted amendment, or an affidavit or otherevidence. See § 1.116 of this title for amendments, affidavits orother evidence filed after final action but before or on the same

date of filing an appeal and § 41.63 for amendments, affidavitsor other evidence filed after the date of filing the appeal.

(c)(1) The rebuttal brief of any requester may bedirected to the examiner’s answer and/or the respondent briefof the owner.

(2) The rebuttal brief of a requester may not be directedto the respondent brief of any other requester.

(3) No new ground of rejection can be proposed by arequester.

(4) The rebuttal brief of a requester shall not includeany new or non-admitted affidavit or other evidence. See §1.116(d) of this title for affidavits or other evidence filed afterfinal action but before or on the same date of filing an appealand § 41.63(c) for affidavits or other evidence filed after thedate of filing the appeal.

(d) The rebuttal brief must include a certification that acopy of the rebuttal brief has been served in its entirety on allother parties to the proceeding. The names and addresses of theparties served must be indicated.

(e) If a rebuttal brief is timely filed under paragraph (a) ofthis section but does not comply with all the requirements ofparagraphs (a) through (d) of this section, appellant will benotified of the reasons for non-compliance and provided witha non-extendable period of one month within which to file anamended rebuttal brief. If the appellant does not file an amendedrebuttal brief during the one-month period, or files an amendedrebuttal brief which does not overcome all the reasons fornon-compliance stated in the notification, that appellant’srebuttal brief and any amended rebuttal brief by that appellantwill not be considered.

In the examiner’s answer, each appellant is given aperiod of one month from the mailing date of theexaminer’s answer within which to file a rebuttalbrief in response to the issues raised in theexaminer’s answer and/or in the respondent brief ofan opposing party. The one month period may notbe extended. 37 CFR 41.66(d).

The rebuttal brief must (A) clearly identify eachissue, and (B) point out where the issue was raisedin the examiner’s answer and/or in the respondentbrief. In addition, the rebuttal brief must be limitedto issues raised in the examiner’s answer or in anyrespondent brief. A rebuttal brief will not be enteredif it does not clearly identify each issue and/or is notlimited to issues raised in the examiner’s answer orin any respondent brief. Such a rebuttal brief willremain in the file, but it will not be addressed norconsidered, except to inform the appropriate partythat it was not entered and why.

The rebuttal brief of a third party requester may notbe directed to the respondent brief or any other third

2600-128Rev. 10.2019, June 2020


party requester. No new ground of rejection may beproposed by a third party requester.

After the examiner’s answer, only a rebuttal brief(or an amended rebuttal brief, where appellant isgiven one opportunity to correct a defective originalrebuttal brief (MPEP § 2679)) will be received intothe reexamination proceeding. No other submissionwill be considered, and any such other submissionwill be returned as an improper paper. 37 CFR 1.939.

If no rebuttal brief is received within the one monthperiod set in the examiner’s answer, the CentralReexamination Unit (CRU) will issue a notificationletter to parties using form paragraph 26.67, and willthen forward the reexamination proceeding to theBoard for decision on the appeal(s).

¶ 26.67 No Receipt of Rebuttal Brief(s)

Appellant(s) was given a period of one month from the mailingdate of the examiner’s answer within which to file a rebuttalbrief in response to the examiner’s answer. No rebuttal briefhas been received within that time period. Accordingly, thereexamination proceeding is being forwarded to the Board fordecision on the appeal(s).

Prosecution remains closed. Any further reply/comments byany party will not be considered, and may be returned to theparty that submitted it.

__________________________


If one or more rebuttal briefs is/are timely received,see MPEP § 2679 for treatment of the rebuttalbrief(s).

2679 Office Treatment of Rebuttal Brief[R-11.2013]

As provided in MPEP § 2674, the sole responsibilityfor determining whether rebuttal briefs comply with37 CFR 1.943(c) and 37 CFR 41.71 was delegatedto the Board effective August 17, 2010, butjurisdiction over the inter partes reexaminationproceeding (i.e., to consider briefs, conduct an appealconference, draft an examiner’s answer, and decidethe entry of amendments, evidence, and informationdisclosure statements filed after the Right of AppealNotice (RAN) or after the filing of a notice of

appeal) is retained in the Central ReexaminationUnit (CRU) until a docketing notice is entered afterthe time period for filing the last rebuttal briefexpires or the examiner acknowledges the receiptand entry of the last rebuttal brief. Accordingly,when a rebuttal brief is received in response to anexaminer’s answer, it is reviewed by the Board andthen forwarded to the CRU for the examiner toconsider the submission(s) and acknowledge therebuttal brief using a Form PTOL-90.

Some examples of acknowledgement by theexaminer are:

Example 1

The rebuttal brief filed 1/16/2999 by patent owner appellant hasbeen entered.

No further response by the examiner is appropriate. Any furtherreply/comments by any party will be not be considered, andmay be returned to the party that submitted it. The inter partesreexamination proceeding is being forwarded to the Board fordecision on the appeal.

Example 2

The rebuttal brief filed on 1/16/2999 by the third party requesterappellant has been entered. The requester requested an OralHearing.

No further response by the examiner is appropriate. Any furtherreply/comments by any party will be not be considered, andmay be returned to the party that submitted it. The reexaminationproceeding is being forwarded to the Board for decision on theappeals.

In a very rare situation, where the examiner findsthat it is essential to address a rebuttal brief, theexaminer must reopen prosecution. In order toreopen prosecution after an examiner’s answer, theCRU Director must approve the same in writing, atthe end of the action that reopens prosecution.

2680 Oral Hearing [R-08.2012]

37 CFR 41.73 Oral hearing.

(a) An oral hearing should be requested only in thosecircumstances in which an appellant or a respondent considerssuch a hearing necessary or desirable for a proper presentationof the appeal. An appeal decided on the briefs without an oralhearing will receive the same consideration by the Board as anappeal decided after an oral hearing.

(b) If an appellant or a respondent desires an oral hearing,he or she must file, as a separate paper captioned “REQUESTFOR ORAL HEARING,” a written request for such hearing

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accompanied by the fee set forth in § 41.20(b)(3) within twomonths after the date of the examiner’s answer. The time forrequesting an oral hearing may not be extended. The requestmust include a certification that a copy of the request has beenserved in its entirety on all other parties to the proceeding. Thenames and addresses of the parties served must be indicated.

(c) If no request and fee for oral hearing have been timelyfiled by appellant or respondent as required by paragraph (b) ofthis section, the appeal will be assigned for consideration anddecision on the briefs without an oral hearing.

(d) If appellant or respondent has complied with all therequirements of paragraph (b) of this section, a hearing date willbe set, and notice given to the owner and all requesters. If anoral hearing is held, an oral argument may be presented by, oron behalf of, the primary examiner if considered desirable byeither the primary examiner or the Board. The notice shall seta non-extendable period within which all requests for oralhearing shall be submitted by any other party to the appealdesiring to participate in the oral hearing. A hearing will be heldas stated in the notice, and oral argument will be limited to thirtyminutes for each appellant or respondent who has requested anoral hearing, and twenty minutes for the primary examiner unlessotherwise ordered. No appellant or respondent will be permittedto participate in an oral hearing unless he or she has requestedan oral hearing and submitted the fee set forth in § 41.20(b)(3).

(e)(1) At the oral hearing, each appellant andrespondent may only rely on evidence that has been previouslyentered and considered by the primary examiner and presentargument that has been relied upon in the briefs except aspermitted by paragraph (e)(2) of this section. The primaryexaminer may only rely on argument and evidence relied uponin an answer except as permitted by paragraph (e)(2) of thissection. The Board will determine the order of the argumentspresented at the oral hearing.

(2) Upon a showing of good cause, appellant,respondent and/or the primary examiner may rely on a newargument based upon a recent relevant decision of either theBoard or a Federal Court.

(f) Notwithstanding the submission of a request for oralhearing complying with this rule, if the Board decides that ahearing is not necessary, the Board will so notify the owner andall requesters.

If an appellant or a respondent desires an oral hearingin an appeal of an inter partes reexaminationproceeding, he/she must file a written request forsuch hearing, accompanied by the fee set forth in 37CFR 41.20(b)(3), within two months after the dateof the examiner’s answer. There is no extension ofthe time for requesting a hearing. 37 CFR 41.73(b).No appellant or respondent will be permitted toparticipate in an oral hearing, unless he or she hasrequested an oral hearing and submitted the fee setforth in 37 CFR 41.20(b)(3).

Where the appeal involves reexaminationproceedings, oral hearings are open to the public as

observers (subject to the admittance proceduresestablished by the Board), unless one of theappellants and/or the respondents (A) petitions under37 CFR 41.3 that the hearing not be open to thepublic, (B) presents sufficient reasons for such arequest, (C) pays the petition fee set forth in 37 CFR41.20(a), and (D) the petition is granted.

2681 Board Decision [R-07.2015]

37 CFR 41.77 Decisions and other actions by the Board.

(a) The Patent Trial and Appeal Board, in its decision, mayaffirm or reverse each decision of the examiner on all issuesraised on each appealed claim, or remand the reexaminationproceeding to the examiner for further consideration. Thereversal of the examiner’s determination not to make a rejectionproposed by the third party requester constitutes a decisionadverse to the patentability of the claims which are subject tothat proposed rejection which will be set forth in the decisionof the Patent Trial and Appeal Board as a new ground ofrejection under paragraph (b) of this section. The affirmance ofthe rejection of a claim on any of the grounds specifiedconstitutes a general affirmance of the decision of the examineron that claim, except as to any ground specifically reversed.

(b) Should the Board reverse the examiner’s determinationnot to make a rejection proposed by a requester, the Board shallset forth in the opinion in support of its decision a new groundof rejection; or should the Board have knowledge of any groundsnot raised in the appeal for rejecting any pending claim, it mayinclude in its opinion a statement to that effect with its reasonsfor so holding, which statement shall constitute a new groundof rejection of the claim. Any decision which includes a newground of rejection pursuant to this paragraph shall not beconsidered final for judicial review. When the Board makes anew ground of rejection, the owner, within one month from thedate of the decision, must exercise one of the following twooptions with respect to the new ground of rejection to avoidtermination of the appeal proceeding as to the rejected claim:

(1) Reopen prosecution. The owner may file a responserequesting reopening of prosecution before the examiner. Sucha response must be either an amendment of the claims so rejectedor new evidence relating to the claims so rejected, or both.

(2) Request rehearing. The owner may request thatthe proceeding be reheard under § 41.79 by the Board upon thesame record. The request for rehearing must address any newground of rejection and state with particularity the pointsbelieved to have been misapprehended or overlooked in enteringthe new ground of rejection and also state all other grounds uponwhich rehearing is sought.

(c) Where the owner has filed a response requestingreopening of prosecution under paragraph (b)(1) of this section,any requester, within one month of the date of service of theowner’s response, may once file comments on the response.Such written comments must be limited to the issues raised bythe Board’s opinion reflecting its decision and the owner’sresponse. Any requester that had not previously filed an appealor cross appeal and is seeking under this subsection to filecomments or a reply to the comments is subject to the appeal

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and brief fees under § 41.20(b)(1) and (2), respectively, whichmust accompany the comments or reply.

(d) Following any response by the owner under paragraph(b)(1) of this section and any written comments from a requesterunder paragraph (c) of this section, the proceeding will beremanded to the examiner. The statement of the Board shall bebinding upon the examiner unless an amendment or newevidence not previously of record is made which, in the opinionof the examiner, overcomes the new ground of rejection statedin the decision. The examiner will consider any owner responseunder paragraph (b)(1) of this section and any written commentsby a requester under paragraph (c) of this section and issue adetermination that the rejection is maintained or has beenovercome.

(e) Within one month of the examiner’s determinationpursuant to paragraph (d) of this section, the owner orany requester may once submit comments in response to theexaminer’s determination. Within one month of the date ofservice of comments in response to the examiner’sdetermination, the owner and any requesters may file a reply tothe comments. No requester reply may address the commentsof any other requester reply. Any requester that had notpreviously filed an appeal or cross appeal and is seeking underthis subsection to file comments or a reply to the comments issubject to the appeal and brief fees under § 41.20(b)(1) and (2),respectively, which must accompany the comments or reply.

(f) After submission of any comments and any replypursuant to paragraph (e) of this section, or after time hasexpired, the proceeding will be returned to the Board whichshall reconsider the matter and issue a new decision. The newdecision is deemed to incorporate the earlier decision, exceptfor those portions specifically withdrawn.

(g) The time period set forth in paragraph (b) of this sectionis subject to the extension of time provisions of § 1.956 of thistitle when the owner is responding under paragraph (b)(1) ofthis section. The time period set forth in paragraph (b) of thissection may not be extended when the owner is respondingunder paragraph (b)(2) of this section. The time periods set forthin paragraphs (c) and (e) of this section may not be extended.

After consideration of the record of the inter partesreexamination proceeding, including all briefs andthe examiner’s answer, the Board issues its decision,affirming the examiner in whole or in part, orreversing the examiner’s decision, sometimes alsosetting forth a new ground of rejection. Where thereis reason to do so, the Board will sometimes remandthe reexamination proceeding to the examiner forfurther consideration, prior to rendering a decision.

I. BOARD DECISION MAY CONTAIN NEWGROUND OF REJECTION

37 CFR 41.77(b) provides express discretionaryauthority for the Board to include, in its decision, anew ground(s) of rejection for any pending claim on

appeal. 37 CFR 41.77(b) is not intended as aninstruction to the Board to revisit every claim inevery appealed proceeding. It is, rather, intended togive the Board express discretionary authority to actwhen it becomes readily apparent, during theconsideration of the claims, that one or more claimsare clearly subject to rejection on the same groundsor on different grounds, or different reasoning fromthose applied against the rejected claims.

It should be noted that, pursuant to 37 CFR 41.77(a),the reversal of the examiner’s determination not tomake a rejection proposed by the requesterconstitutes a decision adverse to the patentability ofthe claims which are subject to that proposedrejection. Accordingly, such reversal will be set forthin the Board’s decision as a new ground of rejectionunder 37 CFR 41.77(b).

II. BOARD DECISION CONTAINING NEWGROUND(S) OF REJECTION IS NON-FINAL

A decision which includes a new ground of rejectionor a remand will be considered a non-final decision.Until the Board issues a final decision, the partiesto the appeal to the Board may not appeal to the U.S.Court of Appeals for the Federal Circuit under 37CFR 41.81.

III. NO BOARD RECOMMENDATION OFAMENDMENT TO MAKE CLAIM PATENTABLE

Unlike the practice for applications and ex partereexaminations, the rules do not provide for theBoard in its decision to include a statement that aclaim may be patentable in amended form, wherebythe patent owner would have the right to amend inconformity with that statement and it would bebinding on the examiner in the absence of newreferences or grounds of rejection. The reason behindthe absence of a rule permitting the Board to makesuch a statement is that to permit the patent ownerand the third party requester(s) to comment on aBoard determination of the patentability of ahypothetical amended claim would unduly delay theproceedings.

A remark by the Board that a certain feature doesnot appear in a claim is not to be taken as a statementthat the claim is patentable if the feature is supplied

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by amendment. Ex parte Norlund, 1913 C.D. 161,192 O.G. 989 (Comm’r Pat. 1913).

IV. REVIEW OF BOARD DECISION BY PETITION

Because review of the decisions of the Board relatingto patentability is within the exclusive jurisdictionof the U.S. Court of Appeals for the Federal Circuit,the Board’s decisions are properly reviewable onpetition only for procedural matters and only to theextent of determining whether they involve aconvincing showing of error, abuse of discretion, orpolicy issue appropriate for higher leveldetermination. Reasonable rulings made by theBoard on procedural matters resting in itsdiscretion will not be disturbed upon petition. Aparty in disagreement with a decision of the Boardon substantive merits should consider theappropriateness of filing a request for rehearingunder 37 CFR 41.79 or an appeal to the U.S. Courtof Appeals for the Federal Circuit.

V. PUBLICATION OF BOARD DECISIONS

Decisions of the Board are published at the discretionof the Office. See 37 CFR 41.6(a).

2682 Action Following Decision [R-10.2019]

37 CFR 41.79 Rehearing.

(a) Parties to the appeal may file a request for rehearing ofthe decision within one month of the date of:

(1) The original decision of the Board under § 41.77(a),

(2) The original § 41.77(b) decision under theprovisions of § 41.77(b)(2),

(3) The expiration of the time for the owner to takeaction under § 41.77(b)(2), or

(4) The new decision of the Board under § 41.77(f).

(b)(1) The request for rehearing must state withparticularity the points believed to have been misapprehendedor overlooked in rendering the Board’s opinion reflecting itsdecision. Arguments not raised in the briefs before the Boardand evidence not previously relied upon in the briefs are notpermitted in the request for rehearing except as permitted byparagraphs (b)(2) and (b)(3) of this section.

(2) Upon a showing of good cause, appellant and/orrespondent may present a new argument based upon a recentrelevant decision of either the Board or a Federal Court.

(3) New arguments responding to a new ground ofrejection made pursuant to § 41.77(b) are permitted.

(c) Within one month of the date of service of any requestfor rehearing under paragraph (a) of this section, or any furtherrequest for rehearing under paragraph (d) of this section, theowner and all requesters may once file comments in oppositionto the request for rehearing or the further request for rehearing.The comments in opposition must be limited to the issues raisedin the request for rehearing or the further request for rehearing.

(d) If a party to an appeal files a request for rehearing underparagraph (a) of this section, or a further request for rehearingunder this section, the Board shall render a decision on therequest for rehearing. The decision on the request for rehearingis deemed to incorporate the earlier opinion reflecting itsdecision for appeal, except for those portions specificallywithdrawn on rehearing and is final for the purpose of judicialreview, except when noted otherwise in the decision onrehearing. If the Board opinion reflecting its decision onrehearing becomes, in effect, a new decision, and the Board soindicates, then any party to the appeal may, within one monthof the new decision, file a further request for rehearing of thenew decision under this subsection. Such further request forrehearing must comply with paragraph (b) of this section.

(e) The times for requesting rehearing under paragraph (a)of this section, for requesting further rehearing under paragraph(c) of this section, and for submitting comments under paragraph(b) of this section may not be extended.

37 CFR 41.81 Action following decision.

The parties to an appeal to the Board may not appeal to the U.S.Court of Appeals for the Federal Circuit under § 1.983 of thistitle until all parties’ rights to request rehearing have beenexhausted, at which time the decision of the Board is final andappealable by any party to the appeal to the Board.

37 CFR 1.981 Reopening after a final decision of the PatentTrial and Appeal Board.

When a decision by the Patent Trial and Appeal Board on appealhas become final for judicial review, prosecution of the interpartes reexamination proceeding will not be reopened orreconsidered by the primary examiner except under theprovisions of § 41.77 of this title without the written authorityof the Director, and then only for the consideration of mattersnot already adjudicated, sufficient cause being shown.

The provisions of 37 CFR 41.77 through 41.79 and37 CFR 1.979 through 1.983 deal with action by theparties and the examiner following a decision by theBoard in an inter partes reexamination proceeding.

The Board, in its decision, may affirm or reverse thedecision of the examiner, in whole or in part, on thegrounds of rejection specified by the examiner and/oron the proposed grounds presented by a third partyrequester but not adopted by the examiner. Arejection of claims by the examiner may also beaffirmed on the basis of the argument presented bythe third party requester, and a finding ofpatentability may also be affirmed on the basis of

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the arguments presented by the patent owner. Furtherhandling of the reexamination proceeding willdepend upon the nature of the Board’s decision.

Subsection I below discusses procedures in thesituation where no new grounds of rejection arefound in the decision by the Board. Subsection IIdiscusses procedures in the situation where newground(s) of rejection were entered in the Boarddecision.

I. NO NEW GROUNDS: THE BOARD AFFIRMS,REVERSES A REJECTION, ORAFFIRMS-IN-PART (AND REVERSES ONLY ASTO REJECTION(S))

Where the Board decision (A) affirms the examinerin whole, (B) reverses the examiner in whole whereonly rejections were appealed, or (C) affirms in partand reverses in part, where the only examinerdecision overturned is that of rejecting claims, thereare no new grounds of rejection in the decision. Inthese situations, the CRU processes any papers filedby a party to the appeal in response to the decisionand if no further action is taken by a party withinthe appropriate time period, then the CRU, in duecourse, prepares the proceeding for its conclusionin view of the Board decision, as appropriate. TheBoard retains jurisdiction of the proceeding until theexpiration of both the period for requesting rehearingof the decision by the Board (in accordance with 37CFR 41.79), and the period for seeking court reviewof the decision of the Board (in accordance with 37CFR 1.983). The time period for seeking review ofa decision of the Board by the U.S. Court of Appealsfor the Federal Circuit pursuant to 37 CFR 1.983 isgenerally two months from the date of the decisionof the Board plus any extension obtained under 37CFR 1.304. A final decision may be (1) the originaldecision of the Board under 37 CFR 41.77(a) if noaction under 37 CFR 41.79 is taken by any party;(2) a decision under 37 CFR 41.77(f); or (3) adecision under 37 CFR 41.79(d). The two-monthtime period set forth in 37 CFR 1.304 for filing anotice of appeal to the U.S. Court of Appeals for theFederal Circuit starts on: (1) the mailing date of thefinal Board decision if the decision is mailed to theappellant, or (2) the notification date of the finalBoard decision if electronic mail notification is sentto the appellant under the e-Office Action program,

as indicated on form PTOL-90 accompanying theBoard decision. The time period for requestingrehearing under 37 CFR 41.79 is one month fromthe date of the decision of the Board and the onemonth period may not be extended. 37 CFR 41.79(e).

A. No Action Taken by Parties to the Appeal

If no action has been taken by any party to the appealand at least two weeks after the time for action byany party (to the appeal) has expired, the CRUsupport staff will notify the examiner that theproceeding is ready to be concluded. The delay is topermit any information as to requesting rehearing,or the filing of an appeal, to reach the Office. Theexaminer will take up the reexamination proceedingfor action by issuing a Notice of Intent to Issue InterPartes Reexamination Certificate (NIRC) inaccordance with MPEP § 2687, which will terminatethe prosecution of the reexamination proceeding.

The following form paragraph should be used wherethe NIRC is issued:

¶ 26.67.01 Periods for Seeking Court Review or RehearingHave Lapsed

The periods for seeking court review of, or a rehearing of, thedecision of the Board rendered [1] have expired and no furtheraction has been taken by any party to the appeal. Accordingly,the appeal in this reexamination proceeding is consideredterminated; see 37 CFR 1.979(b). The present Notice of Intentto Issue Inter Partes Reexamination Certificate (NIRC) is issuedin accordance with MPEP § 2687 in order to terminate thepresent reexamination prosecution.

Examiner Note:

In bracket 1, enter the date of the Board decision.

The NIRC will indicate the status of all the claimsin the case as a result of the Board decision. Astatement will be included in the NIRC that “Claims____ have been canceled as a result of the decisionof the Board dated _______.”

Claims indicated as patentable prior to appeal exceptfor their dependency from rejected claims not in theoriginal patent will be treated as if they wererejected. See MPEP § 1214.06. The following twoexamples should be noted (assume that claim 10 hasbeen added to the patent during the reexamination,or claim 10 is a patent claim that was amended

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during the reexamination and claim 11 depends onclaim 10):

- If the Board affirms a rejection of claim 10 and claim 11 wasobjected to prior to appeal as being patentable except for itsdependency from claim 10, the examiner should cancel bothclaims 10 and 11 by formal examiner’s amendment attached aspart of the NIRC.

- On the other hand, if both claims 10 and 11 were rejected priorto the appeal, then the patent owner was never put on notice thatclaim 11 could be made allowable by placing it in independentform. Thus, where the Board affirms a rejection against claim10 but reverses the rejections against dependent claim 11, theexaminer should convert dependent claim 11 into independentform by formal examiner’s amendment and cancel claim 10 (forwhich the rejection was affirmed) in the NIRC. In this instance,the examiner could alternatively set a time period of one monthor 30 days (whichever is longer) in which the patent owner mayrewrite dependent claim 11 in independent form. Extensions oftime under 37 CFR 1.956 will be permitted. If no timely responseis received, the examiner will cancel both claims 10 and 11 inthe NIRC.

See MPEP § 2687 for further guidance in issuingthe NIRC and terminating the prosecution of thereexamination proceeding.

B. A Request for Rehearing of the Decision

Any party to the appeal not satisfied with the Boarddecision may file a (i.e., single) request for rehearingof the decision. The request must be filed within onemonth from the date of (1) the original decisionunder 37 CFR 41.77(a) ; (2) the original 37 CFR41.77(b) decision under the provisions of 37 CFR41.77(b)(2); (3) the expiration of the time for thepatent owner to take action under 37 CFR41.77(b)(2); or (4) a new decision under 37 CFR41.77(f) or 37 CFR 41.79(d) specifically designatedas “new”. The one month period may not beextended. See 37 CFR 41.79(e). The provisions of37 CFR 41.79(b) require that any request mustspecifically state the points believed to have beenmisapprehended or overlooked in the Board’sdecision, as well as all other grounds which rehearingis sought.

If a party does file a request for rehearing of thedecision, any opposing party appellant or opposingparty respondent may, within one month from thedate of service of the request for rehearing, fileresponsive comments on the request for rehearing.

37 CFR 41.79(c). This one month period may notbe extended. 37 CFR 41.79(e).

Where at least one request for rehearing of thedecision is granted, the Board’s decision on therequest for rehearing is deemed to incorporate theearlier opinion reflecting its decision for appeal,except for those portions specifically withdrawn onrehearing, and the decision is final for the purposeof judicial review, except when noted otherwise inthe decision on rehearing. If the Board opinionreflecting its decision on rehearing indicates that thedecision is a new decision, then any party to theappeal may, within one month of the new decision,file a further request for rehearing of the newdecision. Such further request for rehearing mustcomply with 37 CFR 41.79(b). If the Board’s finaldecision on the request for rehearing is not timelyappealed to the court, jurisdiction of the case isreturned to the CRU for processing and subsequentforwarding to the examiner. The examiner willproceed to issue a NIRC and terminate theprosecution of the reexamination proceeding. 37CFR 1.979(b).

II. NEW GROUND OF REJECTION BY BOARD

Pursuant to 37 CFR 41.77(b), the Board may, in itsdecision on appeal, make a new rejection of one ormore appealed claims on either the same groundswith different reasoning or on different grounds fromthose applied against the claims. Pursuant to 37 CFR41.77(a), when the Board decision reverses theexaminer in whole (or affirms in part and reversesin part) as to the proposed rejections the examinerrefused to adopt or had withdrawn, such a reversalconstitutes a decision adverse to the patentability ofthe claims. Such reversal will be set forth in theBoard’s decision as a new ground of rejection under37 CFR 41.77(b).

In this situation, the patent owner has the option of:

(A) requesting rehearing based upon the samerecord under 37 CFR 41.79(a); or

(B) filing a response requesting reopeningprosecution before the examiner including anappropriate amendment of the newly rejectedclaim(s), and/or new evidence (e.g., a showing of

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facts) relating to the new ground(s) of rejection ofthe claim(s).

After a decision under 37 CFR 41.77(b), the partiesdo not have the option of an immediate appeal to theU.S. Court of Appeals for the Federal Circuitbecause the decision under 37 CFR 41.77(b) is nota final decision. Patent owner must exercise one ofthe two above-mentioned options within one monthfrom the date of the decision. Extension of time areavailable under37 CFR 1.956 where reopening willbe requested; no extensions of time are available torequest rehearing. See 37 CFR 41.77(g). If the patentowner does not exercise either option, then the Boardmay terminate the appeal as to the newly rejectedclaim(s). If the patent owner files a submission under37 CFR 41.77(b)(1) or (2) that is denied entry bythe Board, then the Board may terminate the appealas to the newly rejected claim(s), designate thedecision as to any remaining claims as a finaldecision, and permit a request for rehearing for theaffirmed claims within one month from the date ofnotice of termination.

Jurisdiction of the proceeding remains with theBoard until the Board (1) remands the proceedingto the examiner or (2) designates the decision as afinal decision. If the Board remands the proceedingto the examiner after the Board approves the entryof the patent owner’s request to reopen prosecution,prosecution will be limited in accordance with thepolicies and procedures set forth in subsection II.B.below. The examiner may not, sua sponte, reopenprosecution, or, for example, issue a Notice of Intentto Issue Inter Partes Reexamination Certificate(NIRC).

Where the Board applies new ground(s) of rejectionto at least one claim, the patent owner may file eithera response requesting a reopening of prosecutionrelating to the new ground(s) of rejection or a requestfor rehearing under 37 CFR 41.79(a)(2) of the newground(s) of rejection based on the same record. Inother words, patent owner may not file both aresponse requesting a reopening of prosecution andalso a request for rehearing under 37 CFR 41.79(a)for the same decision. A patent owner may also notfile both a request for rehearing and a conditionalrequest to reopen in the event that the request forrehearing is denied. If such an improper conditionalrequest to reopen prosecution is received, then the

submission will be treated as a request to reopenprosecution under 37 CFR 41.77(b)(1), and therequest for rehearing will not be entered orconsidered. A patent owner seeking to request oneof the permitted options must comply with the timingprovisions set forth in 37 CFR 41.77(g) and41.79(a)(2), both of which run from the date of theoriginal decision of the Board under 37 CFR41.77(b). Should a patent owner desire to requestreopening with respect to a new ground of rejectionand also to request rehearing relating to anotherground of rejection not newly made by the Board inthe decision, patent owner should request reopeningof prosecution under 37 CFR 41.77(b)(1) addressingthe new ground(s) of rejection only. Once the appealhas resulted in a new Board decision under 37 CFR41.77(f), that new Board decision will incorporatethe earlier decision, except for those portionsspecifically withdrawn. At that time, patent ownerhas one month from the date of the new decision,pursuant to 37 CFR 41.79(a)(4), to request rehearingof the new Board decision including the portions ofthe earlier decision incorporated into the newdecision. Note, however, that if a patent owner filesa request for reopening under 37 CFR 41.77(b)(1)and the Board denies the entry of that request, patentowner has no opportunity to subsequently requestrehearing under 37 CFR 41.77(b)(2). A requestermay seek rehearing under 37 CFR 41.79 of a Boarddecision containing a new ground of rejection eitherwithin one month of the expiration of the time forthe patent owner to take action under 37 CFR41.77(b)(2), or within one month of the new Boarddecision under 37 CFR 41.77(f).

A. Proceeding under 37 CFR 41.77(b)(2): RequestingRehearing of the Decision Which Includes a NewGround of Rejection

A patent owner’s request for rehearing by the Boardmust be filed within a nonextendable one monthperiod set by 37 CFR 41.79(a). By proceeding inthis manner, the patent owner waives his or her rightto further prosecution before the examiner. In reGreenfield, 40 F.2d 775, 5 USPQ 474 (CCPA 1930).If the patent owner does file a request for rehearingof the decision, any third party requester that is aparty to the appeal may, within a non-extendableone month period from the date of service of the

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request for rehearing, file responsive comments onthe request. See37 CFR 41.79(c).

B. Proceeding under 37 CFR 41.77(b)(1): RequestingReopening of Prosecution and Submission ofAmendment or Showing of Facts After Decision WhichIncludes a New Ground of Rejection

1. Patent Owner’s Submission under 37 CFR41.77(b)(1)

If the patent owner elects to proceed before theexaminer, the patent owner must take action withinthe one month period for response which will be setin the Board’s decision. The decision may provideprocedural guidance regarding what will beacceptable in a request for reopening prosecutionunder 37 CFR 41.77. Extensions of time under 37CFR 1.956 are available to extend the period. 37CFR 41.77(g). The extension(s) may not, however,extend the time period more than six months fromthe date of the Board’s decision.

When the patent owner submits a response pursuantto 37 CFR 41.77(b)(1) and the Board grants therequest to reopen prosecution, the proceeding willthen be governed by the procedures set forth in 37CFR 41.77(c) through 37 CFR 41.77(g). Under 37CFR 41.77(b)(1), the patent owner may amend theclaims involved, or substitute new claims to avoidthe art or reasons stated by the Board. Ex parteBurrowes, 110 OG 599, 1904 C.D. 155 (Comm’rPat. 1904). The patent owner may, alternatively orin addition, submit evidence relating to the newrejection(s) set forth by the Board. The newground(s) of rejection raised by the Board does not“reopen the prosecution” (under 37 CFR 41.77(b)(1)and 37 CFR 41.77(c) through 37 CFR 41.77(f))except as to that subject matter to which the newrejection was applied. Accordingly, the Board willreview any submission under 37 CFR 41.77(b)(1)and will determine whether the request for reopeningwill be granted and if the submission should beentered into the record. Mere argument withouteither amendment (of the claims so rejected) or thesubmission of evidence or a showing of facts (as tothe claims so rejected) is not in compliance and theBoard will not grant the request to reopen. If theBoard denies patent owner’s request to reopenprosecution under 37 CFR 41.77(b)(1), no

opportunity to subsequently request rehearing under37 CFR 41.77(b)(2) will be provided. Anyamendment or new evidence not directed to thatsubject matter to which the new rejection wasapplied will be refused entry and will not beconsidered.

2. Third Party Requester Comments under 37 CFR41.77(c)

In accordance with 37 CFR 41.77(c), the third partyrequester may once file comments on the patentowner’s submission under 37 CFR 41.77(b)(1)within one month of the date of service of the requestto reopen prosecution. The one-month time periodcannot be extended. See 37 CFR 41.77(g). Thecomments must be limited to issues concerning thenew ground(s) of rejection raised by the decision ofthe Board or the patent owner’s response. Thecomments may include new evidence and argumentsif limited to support the new grounds of rejection bythe Board, including new evidence and argumentsdirected towards amended or new claims ifnecessitated by patent owner’s submission under 37CFR 41.77(b)(1). The Board will review anycomments under 37 CFR 41.77(c) to determine ifthe comments should be entered into the record. Anycomments that address issues not raised by the newgrounds of rejection in the Board’s decision or thepatent owner’s response under 37 CFR 41.77(b)(1)will be refused entry and will not be considered. Ifthe third party requester is not an appellant orcross-appellant, such a requester may still filecomments under 37 CFR 41.77(c) if the commentsare presented with payment of the appeal fee setforth in 37 CFR 41.20(b)(1) and appeal brief fee setforth in 37 CFR 41.20(b)(2).

3. Examiner’s Determination under 37 CFR 41.77(d)

The Board will formally remand the proceeding backto the examiner prior to the examiner’s determinationunder 37 CFR 41.77(d). In the remand order, theBoard should indicate whether the patent owner’sresponse under 37 CFR 41.77(b)(1) is entered, notentered, or entered-in-part. If the patent owner’sresponse is entered-in-part, the remand order shouldinstruct the examiner which portion(s) or evidenceis not entered. For example, the remand order mayinstruct the examiner that the amendment cancelling

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claim 1 and adding new proposed substitute claim10 is entered but the declaration and exhibits under37 CFR 1.131(a) to disqualify the Jones referenceis not entered. In the remand order, the Board shouldsimilarly explain whether any third party requestercomment(s) is entered, not entered, orentered-in-part. The examiner should assume thatthe Board has entered papers filed under 37 CFR41.77(b)(1) or (c) unless the remand order explicitlystates otherwise. If the examiner is uncertain aboutthe entry status of a paper, the examiner shoulddiscuss the issue with his or her SPRS, who thenmay contact the Board to seek clarification, ifnecessary.

After a remand order by the Board, the examinerwill consider the submissions (or portions thereof)under 37 CFR 41.77(b)(1) (e.g., patent owner’srequest to reopen) and 37 CFR 41.77(c) (e.g., thirdparty requester comments) that were entered by theBoard. The examiner may only issue a determinationunder 37 CFR 41.77(d) and may not issue anothertype of Office action, such as a nonfinal action, anadvisory action, a Right of Appeal Notice, or aNotice of Intent to Issue Inter Partes ReexaminationCertificate (NIRC).

The determination under 37 CFR 41.77(d) is limitedto the examiner’s determination as to whether or notthe new statutory ground(s) of rejection in the Boarddecision has been overcome. Similar to the situationwhere the Board applies a new ground of rejectionin ex parte examination, unless an amendment ornew evidence not of record at the time of the Boarddecision is presented, the examiner’s determinationmay not indicate that the rejection has beenovercome. The examiner will explain the reasoningfor his or her opinion. For example, the examinermay find that the patent owner’s amendment toindependent claim 1 introduces a new limitation thatis not taught by any of the references applied in thenew ground(s) of rejection. The examiner shouldexplicitly identify the limitation that is not taughtand provide an explanation of why the examinerfinds that the references applied in the new ground(s)of rejection do not teach the missing limitation. Inthe determination under 37 CFR 41.77(d), theexaminer will address any entered third partyrequester’s arguments and evidence. For example,if the Board enters the requester’s evidence of

inherency, which is related to the Board’s newground of rejection, the examiner should addresswhether the evidence is, or is not, sufficient to showinherency. The examiner will not comment on anyentered arguments or comments that are not limitedto the new ground(s) of rejection issued in theBoard’s decision (e.g., arguments or comments thataddressed a rejection affirmed in the Board’sdecision). The examiner also will not comment onany unentered amendments, arguments, or evidencedsubmitted by either the patent owner or a third partyrequester.

The determination will set (1) a one-month timeperiod from the mailing date of the determinationfor the patent owner and third party requester(s) tofile comments on the examiner’s determination under37 CFR 41.77(d) and (2) a one month time periodfrom the date of service of such comments for thepatent owner and third party requester(s) to file areply to the comments. For example, form paragraph26.75 may be used:

¶ 26.75 Time Period for Response under 37 CFR 41.77(e)

Periods for response to this determination are identified in 37CFR 41.77(e). Following expiration of those time periods, theproceeding will be returned to the Board for reconsiderationunder 37 CFR 41.77(f). Note that under 37 CFR 41.77(e), patentowner and third party requester responsive comments are dueone month from the mailing date of this determination, and boththird party requester and patent owner replies to those commentsare then due one month from date of service of the comments.These time periods cannot be extended. See 37 CFR 41.77(g).

4. Comments under 37 CFR 41.77(e)

Patent owner and third party requester(s) have onemonth from the mailing date of the determinationunder 37 CFR 41.77(d) to once file comments onthe determination. If any comments are filed, eachopposing party may then file a single reply to thecomments from an opposing party. No amendmentsor further evidence may be submitted as part of thesecomments. The reply must be filed within one monthfrom the date of service of the comments. These timeperiods cannot be extended. See 37 CFR 41.77(g).If a third party requester is not an appellant orcross-appellant, such a requester may still filecomments under 37 CFR 41.77(e) if the commentsare presented with payment of the appeal fee setforth in 37 CFR 41.20(b)(1) and appeal brief fee setforth in 37 CFR 41.20(b)(2).

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After receipt of any comments and replies that arefiled, the examiner will determine if the commentsand replies are compliant with the requirements of37 CFR 41.77(e). This review is similar to the scopeof an examiner’s review of a rebuttal brief forcompliance with 37 CFR 41.71. See MPEP § 2678.Comments that are not limited to issues raised in thedetermination under 37 CFR 41.77(d) will not beentered. Replies that are not limited to issues raisedby the comments to the determination will not beentered. Comments and/or replies that do not complywith 37 CFR 41.77(e) will not be entered but willremain in the record for the proceeding. Theexaminer will notify the parties and the Board of thecompliance with 37 CFR 41.77(e) and will forwardthe proceeding to the Board. Specifically, theexaminer will issue a communication (e.g., formPTOL-90) which acknowledges that the commentsand replies were filed, states which submissions wereentered or not entered, and states that the proceedingis being forwarded to the Board.

If the patent owner or the third party fails to filecomments or replies under 37 CFR 41.77(e), afterexpiration of the applicable time period, theexaminer will return the proceeding to the Board foraction in accordance with 37 CFR 41.77(f) by issuinga communication (e.g., a form PTOL-90), whichstates the lack of receipt of either the comments orreplies and that the proceeding is being forwardedto the Board.

After the issuance of the communication pertainingto the comments and replies under 37 CFR 41.77(e),jurisdiction of the proceeding will transfer to theBoard. In accordance with 37 CFR 41.77(f), theBoard will then act upon the proceeding. If the Boardissues a final decision, the alternatives available toa party to the appeal are available. See MPEP §2683.

C. No submission under 37 CFR 41.77(b)(1) or (2)

If the patent owner does not request, or does notproperly request, rehearing or reopening ofprosecution in accordance with 37 CFR 41.77(b),the Board may terminate the appeal proceeding asto the claim(s) rejected pursuant to 37 CFR 41.77(b)and designate the decision as to any remainingclaims final for purposes of judicial review. Final

action by the Board will give rise to the alternativesavailable to a party to the appeal following a finaldecision by the Board, with respect to any remainingclaims.

III. REMAND BY BOARD

In accordance with 37 CFR 41.77(a), the Board, inits decision, may remand the reexaminationproceeding to the examiner for further consideration.A Board decision which includes a remand inaccordance with 37 CFR 41.77(a) will not beconsidered a “final decision” in the case.

The Board may remand the case to an examinerwhere appropriate procedure has not been followed,where further information is needed, or wherethe examiner is to consider something which theexaminer did not yet consider (or it is not clear thatthe examiner had considered it).

After the examiner has addressed the remand,the examiner will either return the case to theBoard (via the CRU) or reopen prosecution, asappropriate. See subsection A. below for policiesregarding reopening prosecution after a remand bythe Board.

A. Reopening Prosecution of Case

Reopening prosecution of a case after decision bythe Board should be a rare occurrence. Proceedingswhich have been decided by the Board will not bereopened or reconsidered by the primary examiner,unless the provisions of 37 CFR 41.77 apply, or thewritten consent of the Director of the USPTO isobtained for the consideration of matters not alreadyadjudicated, where sufficient cause has been shown.See 37 CFR 1.981 and MPEP § 1214.07.

The written consent of the CRU Director is requiredfor an action reopening prosecution where thereexamination proceeding has been remanded to theexaminer for a failure to follow appropriateprocedure, to provide more information, or toconsider something not yet considered, and theexaminer then concludes, after consideration of allthe evidence and argument, that a decision as topatentability made in the RAN should be changed.If so, prosecution would be reopened with the written

2600-138Rev. 10.2019, June 2020


consent of the CRU Director and an Office actionissued, so that any party adversely affected by thechange in the examiner’s position will have anopportunity to consider it and subsequently respondthe examiner’s new decision.

Once jurisdiction is returned to the CRU from theBoard, the CRU Director will decide any petition toreopen prosecution of an inter partes reexaminationproceeding after decision by the Board, where nocourt action has been filed and the time for filingsuch has expired. MPEP § 1002.02(c), item 1.

2683 Appeal to Courts [R-07.2015]

35 U.S.C. 141 Appeal to the Court of Appeals for the FederalCircuit.

[Editor Note: Not applicable to proceedings commenced on orafter September 16, 2012. See 35 U.S.C. 141 for the lawotherwise applicable.]

*****

A patent owner, or a third-party requester in an inter partesreexamination proceeding, who is in any reexaminationproceeding dissatisfied with the final decision in an appeal tothe Board of Patent Appeals and Interferences under section134 may appeal the decision only to the United States Court ofAppeals for the Federal Circuit.

*****

PART 90 — JUDICIAL REVIEW OF PATENTTRIAL AND APPEAL BOARD

DECISIONS

37 CFR 90.1 Scope.

The provisions herein govern judicial review for Patent Trialand Appeal Board decisions under chapter 13 of title 35, UnitedStates Code. Judicial review of decisions arising out of interpartes reexamination proceedings that are requested under 35U.S.C. 311, and where available, judicial review of decisionsarising out of interferences declared pursuant to 35 U.S.C. 135continue to be governed by the pertinent regulations in effecton July 1, 2012.

37 CFR 1.302 and 37 CFR 1.304, as in effect on July1, 2012, are still applicable to inter partesreexamination proceedings (note that, effectiveSeptember 16, 2012, the Board of Patent Appealsand Interferences was redesignated as the PatentTrial and Appeal Board):

37 CFR 1.302 Notice of appeal.

(a) When an appeal is taken to the U.S. Court of Appealsfor the Federal Circuit, the appellant shall give notice thereofto the Director within the time specified in § 1.304.

*****

(d) In inter partes reexamination proceedings, the noticemust be served as provided in § 1.903.

(e) Notices of appeal directed to the Director shall be mailedto or served by hand on the General Counsel as provided in §104.2.

37 CFR 1.304 Time for appeal or civil action.

(a)(1) The time for filing the notice of appeal to theU.S. Court of Appeals for the Federal Circuit (§ 1.302) or forcommencing a civil action (§ 1.303) is two months from thedate of the decision of the Board of Patent Appeals andInterferences. If a request for rehearing or reconsideration ofthe decision is filed within the time period provided under §41.52(a), § 41.79(a), or § 41.127(d) of this title, the time forfiling an appeal or commencing a civil action shall expire twomonths after action on the request. In contested cases before theBoard of Patent Appeals and Interferences, the time for filinga cross-appeal or cross-action expires:

(i) Fourteen days after service of the notice ofappeal or the summons and complaint; or

(ii) Two months after the date of decision of theBoard of Patent Appeals and Interferences, whichever is later.

(a)(2) The time periods set forth in this section are notsubject to the provisions of § 1.136, § 1.550(c), or § 1.956, orof § 41.4 of this title.

(a)(3) The Director may extend the time for filing anappeal or commencing a civil action:

(i) For good cause shown if requested in writingbefore the expiration of the period for filing an appeal orcommencing a civil action, or

(ii) Upon written request after the expiration of theperiod for filing an appeal or commencing a civil action upona showing that the failure to act was the result of excusableneglect.

(b) The times specified in this section in days are calendardays. The time specified herein in months are calendar monthsexcept that one day shall be added to any two-month periodwhich includes February 28. If the last day of the time specifiedfor appeal or commencing a civil action falls on a Saturday,Sunday or Federal holiday in the District of Columbia, the timeis extended to the next day which is neither a Saturday, Sundaynor a Federal holiday.

*****

37 CFR 1.983 Appeal to the United States Court of Appealsfor the Federal Circuit in inter partes reexamination.

(a) The patent owner or third party requester in an interpartes reexamination proceeding who is a party to an appealto the Patent Trial and Appeal Board and who is dissatisfiedwith the decision of the Patent Trial and Appeal Board may,subject to § 41.81, appeal to the U.S. Court of Appeals for theFederal Circuit and may be a party to any appeal thereto takenfrom a reexamination decision of the Patent Trial and AppealBoard.

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(b) The appellant must take the following steps in such anappeal:

(1) In the U.S. Patent and Trademark Office, timelyfile a written notice of appeal directed to the Director inaccordance with §§ 1.302 and 1.304;

(2) In the U.S. Court of Appeals for the Federal Circuit,file a copy of the notice of appeal and pay the fee, as providedfor in the rules of the U.S. Court of Appeals for the FederalCircuit; and

(3) Serve a copy of the notice of appeal on every otherparty in the reexamination proceeding in the manner providedin § 1.248.

(c) If the patent owner has filed a notice of appeal to theU.S. Court of Appeals for the Federal Circuit, the third partyrequester may cross appeal to the U.S. Court of Appeals for theFederal Circuit if also dissatisfied with the decision of the PatentTrial and Appeal Board.

(d) If the third party requester has filed a notice of appealto the U.S. Court of Appeals for the Federal Circuit, the patentowner may cross appeal to the U.S. Court of Appeals for theFederal Circuit if also dissatisfied with the decision of the PatentTrial and Appeal Board.

(e) A party electing to participate in an appellant’s appealmust, within fourteen days of service of the appellant’s noticeof appeal under paragraph (b) of this section, or notice of crossappeal under paragraphs (c) or (d) of this section, take thefollowing steps:

(1) In the U.S. Patent and Trademark Office, timelyfile a written notice directed to the Director electing toparticipate in the appellant’s appeal to the U.S. Court of Appealsfor the Federal Circuit by mail to, or hand service on, the GeneralCounsel as provided in § 104.2;

(2) In the U.S. Court of Appeals for the Federal Circuit,file a copy of the notice electing to participate in accordancewith the rules of the U.S. Court of Appeals for the FederalCircuit; and

(3) Serve a copy of the notice electing to participateon every other party in the reexamination proceeding in themanner provided in § 1.248.

(f) Notwithstanding any provision of the rules, in anyreexamination proceeding commenced prior to November 2,2002, the third party requester is precluded from appealing andcross appealing any decision of the Patent Trial and AppealBoard to the U.S. Court of Appeals for the Federal Circuit, andthe third party requester is precluded from participating in anyappeal taken by the patent owner to the U.S. Court of Appealsfor the Federal Circuit.

I. APPEAL TO UNITED STATES COURT OFAPPEALS FOR THE FEDERAL CIRCUIT ISAVAILABLE

A. For Any Inter Partes Reexamination Proceeding“Commenced” on or After November 2, 2002

Section 13106 of Public Law 107-273, 116 Stat.1758, 1899-1906 (2002), granted the inter partesreexamination third party requester the right toappeal an adverse decision of the Board to the U.S.Court of Appeals for the Federal Circuit (FederalCircuit). 35 U.S.C. 315(b)(1). It should be noted,however, in Consumer Watchdog v. WisconsinAlumni Research Foundation, 111 USPQ2d 1241,753 F.3d 1258 (Fed Cir. 2014), the court found thatthe inter partes reexamination requester lackedArticle III standing because it did not identify “aparticularized, concrete interest in the patentabilityof the ‘913 patent or any injury in fact flowing fromthe Board’s decision…”. Public Law 107-273 furtherauthorized the third party requester to be a party toany appeal taken by the patent owner to the FederalCircuit. 35 U.S.C. 315(b)(2). Also, section 13106 ofPublic Law 107-273 implicitly permitted the patentowner to be a party to the appeal taken by the thirdparty requester to the Federal Circuit. This is because35 U.S.C. 315(a)(2) states that the patent ownerinvolved in an inter partes reexaminationproceeding “may be a party to any appeal taken bya third party requester under subsection (b).” Theeffective date for this revision to the statute isprovided in section 13106 of Public Law 107-273as follows: “The amendments made by this sectionapply with respect to any reexamination proceedingcommenced on or after the date of enactment of thisAct.”

1. Appeal to the Federal Circuit

A patent owner and/or a third party requester in aninter partes reexamination proceeding who is a partyto an appeal to the Board and who is dissatisfiedwith the decision of the Board may, subject to 37CFR 41.81 , appeal to the Federal Circuit. Pursuantto 37 CFR 41.81, the patent owner and/or third partyrequester may not appeal to the Federal Circuit untilall parties’ rights to request rehearing have beenexhausted, at which time the decision of the Boardis final and appealable to the Federal Circuit.

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A patent owner or a third party requester appellantmust take the following steps in such an appeal tothe Federal Circuit (37 CFR 1.983(b)):

(A) In the Office, timely file a written notice ofappeal directed to the Director of the USPTO inaccordance with 37 CFR 1.302 and 1.304, whichshould preferably provide sufficient information toallow the Director to determine whether to exercisethe right (extended by Public Law 112-29, sec.7(e)(4), 125 Stat. 284, 315 (2011)) to intervene inthe appeal pursuant to 35 U.S.C. 143;

(B) In the Federal Circuit, file a copy of thenotice of appeal and pay the fee, as provided for inthe rules of the Federal Circuit; and

(C) Serve a copy of the notice of appeal on everyother party in the reexamination proceeding in themanner provided in 37 CFR 1.248.

2. Cross Appeal

If the patent owner has filed a notice of appeal tothe Federal Circuit, the third party requester maycross appeal to the Federal Circuit if also dissatisfiedwith the decision of the Board. 37 CFR 1.983(c).

If the third party requester has filed a notice ofappeal to the Federal Circuit, the patent owner maycross appeal to the Federal Circuit if also dissatisfiedwith the decision of the Board. 37 CFR 1.983(d).

Such cross appeals would be taken under the rulesof the Federal Circuit for cross appeals. Any noticeof cross appeal should preferably provide sufficientinformation to allow the Director to determinewhether to exercise the right (extended by PublicLaw 112-29, sec. 7(e)(4), 125 Stat. 284, 315 (2011))to intervene in the appeal pursuant to 35 U.S.C. 143.

3. Participation in Other Party’s Appeal

The patent owner and the third party requester mayeach be a party to, i.e., participate in, each other’sappeal to the Federal Circuit from an inter partes reexamination decision of the Board (37 CFR1.983(e)).

A party electing to participate in an appellant’sappeal must, within fourteen days of service of theappellant’s notice of appeal (37 CFR 1.983(b)(3))

or notice of cross appeal (37 CFR 1.983(c) or (d)),take the following steps:

(A) In the Office, timely file a written noticedirected to the Director of the USPTO electing toparticipate in the appellant’s appeal to the FederalCircuit;

(B) In the Federal Circuit, file a copy of thenotice electing to participate; and

(C) Serve a copy of the notice electing toparticipate on every other party in the reexaminationproceeding in the manner provided in 37 CFR 1.248.

B. For Any Inter Partes Reexamination Proceeding“Commenced” Prior to November 2, 2002

In any reexamination proceeding commenced priorto November 2, 2002, only the patent owner canappeal to the U.S. Court of Appeals for the FederalCircuit. Pursuant to 35 U.S.C. 134(c), as it existedprior to its November 2, 2002 revision via PublicLaw 107-273, the third party requester is expresslyprecluded from appealing (and cross appealing) anydecision of the Board in an inter partesreexamination proceeding commenced prior toNovember 2, 2002, to the Federal Circuit. The thirdparty requester is also precluded from participatingin any appeal taken by the patent owner to theFederal Circuit.

Pursuant to 37 CFR 1.983, a patent owner in areexamination proceeding commenced prior toNovember 2, 2002, who is dissatisfied with thedecision of the Board may, subject to 37 CFR 41.81,appeal to the Federal Circuit. Under 37 CFR 41.81,the patent owner may not appeal to the FederalCircuit until all parties’ rights to request rehearingof the Board’s decision have been exhausted, atwhich time the decision of the Board is final andappealable by the patent owner to the Federal Circuit.

The patent owner must take the following steps insuch an appeal:

(A) In the Office, timely file a written notice ofappeal directed to the Director of the USPTO inaccordance with 37 CFR 1.302 and 1.304, whichshould preferably provide sufficient information toallow the Director to determine whether to exercisethe right (extended by Public Law 112-29, sec.

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7(e)(4), 125 Stat. 284, 315 (2011)) to intervene inthe appeal pursuant to 35 U.S.C. 143;

(B) In the Federal Circuit, file a copy of thenotice of appeal and pay the fee, as provided for inthe rules of the Federal Circuit; and

(C) Serve a copy of the notice of appeal on thethird party requester(s) in the reexaminationproceeding in the manner provided in 37 CFR 1.248.

II. APPEAL TO U.S. DISTRICT COURT IS NOTAVAILABLE

The remedy by civil action under 35 U.S.C. 145 isnot available to the patent owner and the third partyrequester in an inter partes reexaminationproceeding. Patent owners and third party requestersdissatisfied with a decision of the Board in an interpartes reexamination proceeding are not permittedto file a civil action against the Director of theUSPTO in any U.S. district court. Instead, they arelimited to appealing decisions of the Office to theFederal Circuit.

When the optional inter partes reexaminationalternative was added to the reexamination statute,the legislation did not provide the parties an avenueof judicial review by civil action under 35 U.S.C.145 in inter partes reexamination proceedings (noris this avenue available for ex parte reexaminationof a patent that issued from an original applicationfiled on or after November 29, 1999; see MPEP §2279). Federal district court proceedings aregenerally complicated and time consuming and,therefore, are contrary to the goal of expeditiousresolution of reexamination proceedings.Accordingly, the first sentence of 35 U.S.C. 145 wasamended to read: “An applicant dissatisfied withthe decision of the [Board] in an appeal under134(a) of this title may, unless appeal has been takento the United States Court of Appeals for the FederalCircuit, have remedy by civil action against theDirector in the United States District Court for theDistrict of Columbia if commenced within such timeafter such decision, not less than sixty days, as theDirector appoints.” (emphasis added). Note that35 U.S.C. 134 part (a), which is included by35 U.S.C. 145 is limited to applicants andapplications, while 35 U.S.C. 134 parts (b) and (c)which are not included by 35 U.S.C. 145 are

directed to reexamination and the patent owner andthe third party requester, respectively.

2684 Information Material to Patentabilityin Reexamination Proceeding [R-08.2012]

37 CFR 1.933 Patent owner duty of disclosure in inter partesreexamination proceedings.

(a) Each individual associated with the patent owner in aninter partes reexamination proceeding has a duty of candor andgood faith in dealing with the Office, which includes a duty todisclose to the Office all information known to that individualto be material to patentability in a reexamination proceeding asset forth in § 1.555(a) and (b). The duty to disclose allinformation known to be material to patentability in an interpartes reexamination proceeding is deemed to be satisfied byfiling a paper in compliance with the requirements set forth in§ 1.555(a) and (b).

(b) The responsibility for compliance with this section restsupon the individuals designated in paragraph (a) of this section,and no evaluation will be made by the Office in thereexamination proceeding as to compliance with this section.If questions of compliance with this section are raised by thepatent owner or the third party requester during a reexaminationproceeding, they will be noted as unresolved questions inaccordance with § 1.906(c).

Duty of disclosure considerations as to inter partes reexamination proceedings parallel those of ex parte reexamination proceedings. In this regard, 37 CFR1.933 incorporates the provisions of 37 CFR 1.555(a)and (b). See MPEP § 2280 for a discussion of theduty of disclosure in reexamination.

Any fraud practiced or attempted on the Office orany violation of the duty of disclosure through badfaith or intentional misconduct results innoncompliance with 37 CFR 1.555(a). This duty ofdisclosure is consistent with the duty placed onpatent applicants by 37 CFR 1.56. Any such issuesraised by the patent owner or the third party requesterduring an inter partes reexamination proceedingwill merely be noted as unresolved questions under37 CFR 1.906(c).

2685 No Interviews on Merits in Inter PartesReexamination Proceedings [R-07.2015]

37 CFR 1.955 Interviews prohibited in inter partesreexamination proceedings.

There will be no interviews in an inter partes reexaminationproceeding which discuss the merits of the proceeding.

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Pursuant to 37 CFR 1.955, an interview whichdiscusses the merits of a proceeding will not bepermitted in inter partes reexamination proceedings.Thus, in an inter partes reexamination proceeding,there will be no inter partes interview as to thesubstance of the proceeding. Also, there will be noseparate ex parte interview as to the substance ofthe proceeding with either the patent owner or thethird party requester. Accordingly, where a partyrequests any information as to the merits of areexamination proceeding, the examiner will notconduct an interview with that party to provide theinformation. Further, an informal amendment by thepatent owner will not be accepted, because thatwould be tantamount to an ex parte interview. Allcommunications between the Office and the patentowner (and the third party requester) which aredirected to the merits of the proceeding must be inwriting and filed with the Office for entry into therecord of the proceeding.

Questions on strictly procedural matters may bediscussed with the parties. The guidance to followis that any information which a person could obtain by reading the file (which is open to the public) isprocedural, and it may be discussed. Matters notavailable from a reading of the file are consideredas relating to the merits of the proceeding, and maynot be discussed. Thus, for example, a questionrelating to when the next Office action will berendered is improper as it relates to the merits of theproceeding (because this information cannot beobtained from a reading of the file).

The Office may, in its sole discretion, telephone aparty as to matters of completing or correcting therecord of a file, where the subject matter discusseddoes not go to the merits of the reexaminationproceeding. This informal telephone call may takethe form of inquiring as to whether a timelyresponse, timely appeal, etc., was filed with theOffice, so as to make certain that a timely response,timely appeal, etc. has not been misdirected withinthe Office. This may also take the form oftelephoning to obtain a paper stated to have beenattached to, or included in, a filing, but not found tobe present in the record. Likewise, calls to obtain acertificate of service, or to have a party re-submit apaper (e.g., where it was submitted via an impropermeans), may be made by the Office. Any such

telephone call IS NOT TO BE MADE by theexaminer, or any other Office employee whoaddresses the proceeding on its merits. Thus, aparalegal or Legal Instruments Examiner (or supportstaff in general), may make such a telephone call. Ifthe party is reached by telephone and the matter isresolved, then the next Office communication asmay be appropriate (e.g., Office action, NIRC)should make the telephone call of record. Anystatement of the telephone call in the nextcommunication must provide that “the content ofthe telephone call was limited solely to” thenon-merits matter discussed, and “nothing else wasdiscussed.” Such a telephone call is not to berecorded on an interview summary record form.

It is also permitted for a paralegal or LegalInstruments Examiner (or support staff in general)to call a requester to discuss a request that fails tocomply with the filing date requirements for filinga reexamination request, because there is noreexamination proceeding yet, and 37 CFR 1.955proscribes interviews in “ inter partes reexaminationproceedings.”

2686 Notification of Existence of Prior orConcurrent Proceedings and DecisionsThereon [R-07.2015]

37 CFR 1.985 Notification of prior or concurrent proceedingsin inter partes reexamination.

(a) In any inter partes reexamination proceeding, the patentowner shall call the attention of the Office to any prior orconcurrent proceedings in which the patent is or was involved,including but not limited to interference or trial before the PatentTrial and Appeal Board, reissue, reexamination, or litigationand the results of such proceedings.

(b) Notwithstanding any provision of the rules, any personat any time may file a paper in an inter partes reexaminationproceeding notifying the Office of a prior or concurrentproceeding in which the same patent is or was involved,including but not limited to interference or trial before the PatentTrial and Appeal Board, reissue, reexamination, or litigationand the results of such proceedings. Such paper must be limitedto merely providing notice of the other proceeding withoutdiscussion of issues of the current inter partes reexaminationproceeding.

It is important for the Office to be aware of any prioror concurrent proceedings in which a patentundergoing inter partes reexamination is or wasinvolved, and any results of such proceedings. Inaccordance with 37 CFR 1.985, the patent owner is

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required to provide the Office with informationregarding the existence of any such proceedings, andthe results thereof, if known. This requirementincludes supplemental examination proceedings andreviews before the Patent Trial and Appeal Boardin addition to the examples provided in 37 CFR1.985(a) reproduced above. Ordinarily, while an inter partes reexamination proceeding is pending,third party submissions filed after the date of theorder are not entered into the reexamination file orthe patent file, unless the third party is a third partyreexamination requester. However, in order to ensurea complete file, with updated status informationregarding prior or concurrent proceedings regardingthe patent under reexamination, the Office will, atany time, accept from any parties, for entry into thereexamination file, copies of notices of suits andother proceedings involving the patent and copiesof decisions or papers filed in the court fromlitigations or other proceedings involving the patent.Such decisions include final court decisions (evenif the decision is still appealable), decisions tovacate, decisions to remand, and decisions as to themerits of the patent claims. Non-merit decisions onmotions such as for a new venue, a newtrial/discovery date, or sanctions will not be enteredinto the patent file, and will be expunged from thepatent file by closing the appropriate paper if theywere entered before discovery of their nature.Further, papers filed in the court from litigations orother proceedings involving the patent will not beentered into the record (and will be expunged ifalready entered) if they provide a party’s arguments,such as a memorandum in support of summaryjudgment. If the argument has an entry right in thereexamination proceeding, it must be submitted viathe vehicle (provision(s) of the rules) that providesfor that entry right. It is not required nor is itpermitted that parties submit copies of copendingreexamination proceedings and applications (whichcopies can be mistaken for a new request/filing);rather, submitters may provide a notice identifyingthe application/proceeding number and its status.Any submission that is not permitted entry will bereturned, expunged, or discarded, at the solediscretion of the Office.

It is to be noted that if the Office, in its solediscretion, deems the volume of the papers filed fromlitigations or other proceedings to be too

extensive/lengthy, the Office may return, expungeor discard, at its sole discretion, all or part of thesubmission. In such an instance, a party may limitthe submission in accordance with what is deemedrelevant, and resubmit the papers. Persons makingsuch submissions must limit the submissions to thenotification, and must not include further argumentsor information. Where a submission is not limitedto bare notice of the prior or concurrent proceedings(in which a patent undergoing reexamination is orwas involved), the submission will be returned,expunged or discarded by the Office. It is tobe understood that highlighting of certain text byunderlining, fluorescent marker, etc., goes beyondbare notice of the prior or concurrent proceedings.Any proper submission pursuant to 37 CFR 1.985will be promptly entered into the record of thereexamination file, and will be considered by theexaminer as to its content, when the proceedingcomes up for action on the merits. Thus, for example,if the patent owner properly files in a reexaminationproceeding, pursuant to 37 CFR 1.985, an enterablepaper from the discovery stage of litigation of thepatent being reexamined, the paper would be enteredinto the reexamination file and considered by theexaminer, the next time the proceeding comes upfor action on the merits. See MPEP § 2686.04 forOffice investigation for prior or concurrent litigation.

2686.01 Multiple Copending ReexaminationProceedings [R-07.2015]

37 CFR 1.989 Merger of concurrent reexaminationproceedings.

(a) If any reexamination is ordered while a prior interpartes reexamination proceeding is pending for the same patentand prosecution in the prior inter partes reexaminationproceeding has not been terminated, a decision may be made tomerge the two proceedings or to suspend one of the twoproceedings. Where merger is ordered, the merged examinationwill normally result in the issuance and publication of a singlereexamination certificate under § 1.997.

(b) An inter partes reexamination proceeding filed under§ 1.913 which is merged with an ex parte reexaminationproceeding filed under § 1.510 will result in the mergedproceeding being governed by §§ 1.902 through 1.997, exceptthat the rights of any third party requester of the ex parte reexamination shall be governed by §§ 1.510 through 1.560.

This section discusses multiple copendingreexamination requests which are filed on the samepatent, where at least one of the multiple copendingreexamination requests is an inter partes request.

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If all of the multiple copending reexaminationrequests are ex parte requests, see MPEP § 2283.

I. WHEN PROCEEDINGS ARE MERGED

Where a second request for reexamination is filedand reexamination is ordered, and a firstreexamination proceeding is pending, theproceedings will be merged where the Office (in itsdiscretion) deems it appropriate to do so, to facilitatethe orderly handling of the proceedings. However,a decision not to merge is within the sole discretionof the Office to facilitate/carry out the statutorymandate of 35 U.S.C. 314(c) to conductreexamination proceedings with “special dispatch.”

Where a second request for reexamination is filedwhile a first reexamination proceeding is pending,the second request is decided based on the claims ineffect at the time of the determination, and ifreexamination is ordered (and the statement-replyperiod expires for any ex parte reexaminationproceeding), the question of merger will then beconsidered. If the proceedings are merged, theprosecution will be conducted at the most advancedpoint possible for the first proceeding. Thus, if afinal rejection (a Right of Appeal Notice) has beenissued in the first proceeding, prosecution willordinarily be reopened to consider the question ofpatentability presented in the second request unlessthe examiner concludes that no new rejection orchange of position is warranted. Also, the patentowner will be provided with an opportunity torespond to any new rejection in a mergedreexamination proceeding prior to an Action ClosingProsecution (ACP) being issued. See MPEP §2671.02.

Where the reexamination proceedings are merged,a single certificate will be issued and published basedupon the merged proceedings, 37 CFR 1.989(a).

II. WHEN PROCEEDING IS SUSPENDED

It may also be desirable in certain situations tosuspend one of the proceedings for a specified periodof time. For example, a suspension of a firstreexamination proceeding may be issued to allowtime for the decision on the second request. Asuspension will only be granted in exceptional

(extraordinary) instances because of the statutoryrequirements that examination proceed with “specialdispatch”, and the express written approval by OPLAmust be obtained. Suspension will not be grantedwhen there is an outstanding Office action.

III. MERGER OF REEXAMINATIONS

The following guidelines should be observed whentwo requests for reexamination directed to a singlepatent have been filed:

The second request (i.e., Request 2) should beprocessed as quickly as possible, and assigned to thesame examiner to whom the first request (i.e.,Request 1) is assigned. If Request 2 is denied,prosecution of Request 1 should continue. If Request2 is granted, a first Office action on the merits willnot be sent with the order granting reexamination inthe second proceeding. Instead, the order willindicate that an Office action will follow in duecourse. MPEP § 2660. The order granting the secondproceeding will be prepared, reviewed by the CentralReexamination Unit (CRU) Supervisory PatentReexamination Specialist (SPRS) and mailed. Theorder will be mailed specially, and the twoproceedings will be forwarded to OPLA forpreparation of a decision whether to merge the twoproceedings.

A decision to merge the reexamination proceedingswill require that responses/comments by the patentowner and the third party requester(s) must consistof a single response/comment paper, addressed toboth files, filed in duplicate each bearing a signature,for entry in both files. The same applies to any otherpaper filed in the merged proceeding. The mergerdecision also will point out that both files will bemaintained as separate complete files.

The merger decision should include a requirementthat the patent owner maintain identical claims inboth files. If the claims are not the same in both filesat the time the merger decision is drafted, an Officeaction will be issued concurrently with the mergerdecision; the Office action will contain a rejectionof the claims under 35 U.S.C. 112(b) as beingindefinite as to the content of the claims, and thusfailing to particularly point out the invention, andthe Office action will require a patent owner

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amendment placing the claims in identical form.Patent owner must respond to the Office action inaccordance with the procedures in 37 CFR 1.111.For patent owner’s response to the Office action tobe considered to be a complete response, patentowner must include (in the proceeding(s) for whichany new or amended claims are being added) theremarks that set forth the basis for having presentedany new or amended claims in the proceedings. Thethird party inter partes requester (in the proceedingsin which the amendment is made) will then have anopportunity to comment on patent owner’s responsewith respect to the amendments made in theproceeding(s) in accordance with the procedures in37 CFR 1.947. Where the claims are already thesame in both reexamination files, the decision onmerger will indicate at its conclusion that an Officeaction will be mailed in due course, and that thepatent owner need not take any action at present.

After the decision of merger is prepared and signed,the decision will be forwarded directly to the CRU,where the decision will be mailed specially.

Where the merger decision indicates that an Officeaction will follow, the merged proceeding isimmediately returned to the examiner, to issue anOffice action, after the CRU mailing and processingof the decision. Where the merger decision indicatesthat the patent owner is given one month to providean amendment to make the claims the same in eachfile (identical amendments to be placed in all files),the CRU will retain jurisdiction over the mergedreexamination proceeding to await submission ofthe amendment or the expiration of the time tosubmit the amendment. After the amendment isreceived and processed by the CRU, or the time forsubmitting the amendment expires, the mergedproceeding will be returned to the examiner, to issuean Office action.

Once the merged proceeding is returned to theexaminer for issuance of an Office action, theexaminer should prepare the action at the mostadvanced point possible for the first proceeding.Thus, if the first proceeding is ready for an ActionClosing Prosecution (ACP) and the secondproceeding does not provide any new informationwhich would call for a new ground of rejection, theexaminer should issue an ACP for the merged

proceeding using the guidance for the prosecutionstage set forth below.

If the decision on the reexamination request has notyet been made in Request 1 and Request 1 isgrantable, it should be processed to the point wherean order granting reexamination is mailed. An Officeaction should not be mailed with the order. Then,Request 1 is normally held until Request 2 is readyfor the prosecution stage following an order grantingreexamination, or until Request 2 is denied. Request2 should be determined on its own merits withoutreference in the decision to Request 1. As before,an Office action should not be mailed with the orderin Request 2.

A. The Prosecution Stage, After Merger

Where merger is ordered, the patent owner isrequired to maintain identical amendments in themerged reexamination files for purposes of themerged proceeding. The maintenance of identicalamendments in the files is required as long as thereexamination proceedings remain merged. Whereidentical amendments are not present in thereexamination files at the time merger is ordered,the patent owner will have been required in an Officeaction to submit an appropriate amendment placingthe same amendments in the proceedings. This maybe accomplished by patent owner amending one ormore of the proceedings, as appropriate. As pointedout above, patent owner must include (in theproceeding(s) for which any new or amended claimsare being added) the remarks that set forth the basisfor having presented any new or amended claims inthe proceedings. Any inter partes third partyrequester will then have an opportunity to commenton patent owner’s response in accordance with theprocedures in 37 CFR 1.947.

When prosecution is appropriate in mergedproceedings, a single combined examiner’s actionwill be prepared. Each action will contain the controlnumber of the two proceedings on every page. Asingle action cover mailing sheet (having bothcontrol numbers at the top) will be provided by theexaminer to the technical support staff. The technicalsupport staff will ensure that the action is processedand mailed to the patent owner and to each of therequesters, that the action cover mailing sheets

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accurately reflect the mailing to each of these parties,that all parties receive copies of the action, the covermailing sheets, and any other attachments, and thatthe entire action, including the mailing sheets andany other attachments, is scanned into the file of theImage File Wrapper (IFW) database.

When a “Notice of Intent To Issue Inter PartesReexamination Certificate” (NIRC) is appropriate,a notice will be printed for the merged proceedingand scanned into the files of the merged proceeding.Both reexamination files will then be processed. TheCRU should prepare the file of the concurrentproceedings in the manner specified in MPEP §2687, before release to Office of Data Management(via the CRU).

The above guidance should be extended to situationswhere more than two requests for reexamination arefiled for a single patent. The guidance should alsobe extended to situations where one of the requestsis a request for ex parte reexamination. However,where an ex parte reexamination is to be includedin the merger, allowance must be made for thestatement and reply periods provided for in an exparte reexamination after the order grantingreexamination is issued. If all the reexaminationproceedings to be merged are ex partereexaminations, the present section does not apply,but rather see MPEP § 2283.

IV. PROCEEDINGS NOT MERGED

Pursuant to 35 U.S.C. 314(c), “[u]nless otherwiseprovided by the Director for good cause, all interpartes reexamination proceedings under thissection…shall be conducted with special dispatchwithin the Office.” This statutory provision isgrounded on the need for certainty and finality as tothe question of patentability raised by the requestfor reexamination. Thus, if a second request forreexamination will unduly delay the firstreexamination proceeding, the two proceedingsgenerally will not be merged. If the Office were tomerge the two proceedings, the first reexaminationproceeding would need to be withdrawn from itsplace in the process, thus delaying, instead ofadvancing, prosecution. This would run contrary tothe statutory “special dispatch” requirement of 35U.S.C. 314 and its intent. On the other hand, if the

Office does not merge, the first reexaminationproceeding can be concluded, and any question ofpatentability raised by the second reexaminationrequest can be resolved in the second proceeding,with no delay resulting. The second request is thenconsidered based on the claims in the patent asindicated in the issued reexamination certificate,rather than the original claims of the patent.However, the Office always retains the authority tomerge because in some instances, it may be moreefficient to merge the two proceedings, which wouldfoster “special dispatch.” The instances where theOffice may, or may not, merge an ongoingreexamination proceeding with a subsequentreexamination proceeding, are addressed on acase-by-case basis.

For processing of the second reexaminationproceeding, see MPEP §§ 2295 and 2695.

V. FEES IN MERGED PROCEEDINGS

Where the proceedings have been merged and apaper is filed which requires payment of a fee (e.g.,excess claims fee, extension of time fee, petition fee,appeal fee, brief fee, oral hearing fee), only a singlefee need be paid. For example, only one fee need bepaid for the patent owner’s appellant brief (or thatof the third party requester), even though the briefrelates to merged multiple proceedings and copiesmust be filed for each file in the merged proceeding.

VI. PETITION TO MERGE MULTIPLECOPENDING REEXAMINATION PROCEEDINGS

No petition to merge multiple reexaminationproceedings is necessary since the Office willgenerally, sua sponte, make a decision as to whetherit is appropriate to merge the multiple reexaminationproceedings. If any petition to merge the proceedingsis filed prior to the order to reexamine the secondrequest, it will not be considered but will be returnedto the party submitting the same. The decisionexpunging such a premature petition will be madeof record in both reexamination files. See MPEP §2667.

The patent owner can file a petition to merge theproceedings at any time after the order to reexaminethe second request. Note that the acceptance of a

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petition to merge the multiple proceedings at anytime after the order to reexamine the second requestis contrary to 37 CFR 1.939 since such acceptancecan be prior to the issuance of the first Office action.Accordingly, the requirement of 37 CFR 1.939 ishereby waived to the extent that a petition for mergerof a reexamination proceeding with a reexaminationproceeding or with a reissue (see MPEP § 2686.03)can be submitted after the order to reexamine hasbeen issued in all the reexamination proceedings tobe merged. This waiver is made to assure merger atthe earliest possible stage. The third party requesterof a reexamination proceeding (reexamination # 1)does not have a right to file a petition under 37 CFR1.182 to merge that reexamination proceeding withanother reexamination proceeding (reexamination# 2), where the reexamination third party requesterdoes not have any standing to request relief withrespect to the other reexamination proceeding(reexamination # 2). No such standing is providedfor anywhere in the statute. Instead of filing apetition under 37 CFR 1.182 to merge thereexamination proceedings, that third party requestermay file a notification of concurrent proceedingspursuant to 37 CFR 1.985(b). After being notifiedof the existence of the concurrent reexaminationproceedings and after consideration of the mergerand suspension options becomes ripe, the Officewould sua sponte consider any action to be taken.The requester does have the right to file a petitionunder 37 CFR 1.182 to stay the reexaminationproceeding that it requested.

All decisions on the merits of petitions to mergemultiple reexamination proceedings, where at leastone of the proceedings is an inter partesreexamination, will be made by OPLA.

Decisions on the merits of petitions to mergemultiple reexamination proceedings, where none ofthe proceedings is an inter partes reexamination,will be made by the CRU Director (or by the CRUSPRS, if the CRU Director delegates such to theCRU SPRS); see MPEP § 2283.

2686.02 Copending Reexamination andInterference Proceedings [R-11.2013]

37 CFR 1.993 Suspension of concurrent interference andinter partes reexamination proceeding.

If a patent in the process of inter partes reexamination is orbecomes involved in an interference or trial before the PatentTrial and Appeal Board, the Director may suspend the interpartes reexamination, interference, or trial. The Director willnot consider a request to suspend an interference or trial unlessa motion under § 41.121(a)(3) of this title to suspend theinterference or trial has been presented to, and denied by, anadministrative patent judge and the request is filed within ten(10) days of a decision by an administrative patent judge denyingthe motion for suspension or such other time as theadministrative patent judge may set.

37 CFR 41.8 Mandatory notices.

(a) In an appeal brief (§§ 41.37, 41.67, or 41.68) or at theinitiation of a contested case (§ 41.101), and within 20 days ofany change during the proceeding, a party must identify:

(1) Its real party-in-interest, and

(2) Each judicial or administrative proceeding thatcould affect, or be affected by, the Board proceeding.

(b) For contested cases, a party seeking judicial review ofa Board proceeding must file a notice with the Board of thejudicial review within 20 days of the filing of the complaint orthe notice of appeal. The notice to the Board must include acopy of the complaint or notice of appeal. See also §§ 1.301 to1.304 of this title.

37 CFR 41.102 Completion of examination.

Before a contested case is initiated, except as the Board mayotherwise authorize, for each involved application and patent:

(a) Examination or reexamination must be completed, and

(b) There must be at least one claim that:

(1) Is patentable but for a judgment in the contestedcase, and

(2) Would be involved in the contested case.

37 CFR 41.103 Jurisdiction over involved files.

The Board acquires jurisdiction over any involved file when theBoard initiates a contested case. Other proceedings for theinvolved file within the Office are suspended except as the Boardmay order.

A patent being reexamined in an inter partesreexamination proceeding may be involved in aninterference proceeding with at least one application,where the patent and the application are claimingthe same patentable invention, and at least one ofthe application’s claims to that invention arepatentable to the applicant. See MPEP Chapter 2300.

The general policy of the Office is that areexamination proceeding will not be delayed, orstayed, because of an interference or the possibilityof an interference. The reason for this policy is therequirement of 35 U.S.C. 314(c) that all

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reexamination proceedings be conducted with“special dispatch” within the Office.

In general, the Office will follow the practice ofmaking the required and necessary decisions in theinter partes reexamination proceeding and, at thesame time, going forward with the interference tothe extent desirable. (See Shaked v. Taniguchi , 21USPQ2d 1289 (Bd. Pat. App. & Inter. 1991), whereit was pointed out that neither the reexamination northe interference will ordinarily be stayed where bothproceedings are before the Office.) It is to be notedthat 37 CFR 41.103 provides the Board with theflexibility to tailor a specific solution to occurrenceswhere reexamination and interference proceedingsfor the same patent are copending, as suchoccurrences may arise. Decisions in the interferencewill take into consideration the status of thereexamination proceeding and what is occurringtherein. The decision as to what actions are taken inthe interference will, in general, be taken inaccordance with normal interference practice.

Although a patent being reexamined via areexamination proceeding may become involved inan interference proceeding, the reexaminationproceeding itself can never be involved in aninterference proceeding. See 35 U.S.C. 135(a) whichstates that “[w]henever an application is made for apatent which, in the opinion of the Director, wouldinterfere with any pending application, or with anyunexpired patent, an interference may be declared”.The reexamination proceeding is neither anapplication nor a patent.

I. ATTEMPTING TO PROVOKE ANINTERFERENCE WITH A PATENT INVOLVEDIN A REEXAMINATION PROCEEDING

See MPEP § 2284 for a discussion of the situationwhere an amendment seeking to provoke aninterference with a patent involved in areexamination proceeding is filed in a pendingapplication. The practice and procedure in this areaas to inter partes reexamination proceedingsparallels that of ex parte reexamination proceedings.

II. MOTION TO SUSPEND INTERFERENCEUNDER 37 CFR 41.121(a)(3) PENDING THE

OUTCOME OF A REEXAMINATIONPROCEEDING

A miscellaneous motion under 37 CFR 41.121(a)(3)to suspend an interference pending the outcome ofa reexamination proceeding may be made at anytime during the interference by any party thereto.See 37 CFR 41.123(b) for the proper procedure. Themotion must be presented to the AdministrativePatent Judge (APJ) who will decide the motion basedon the particular fact situation. However, suspensionis not favored. Normally, no consideration will begiven such a motion unless and until a reexaminationorder is issued, nor will suspension of theinterference normally be permitted until after anymotions have been disposed of in the interferenceproceeding. If the motion under 37 CFR 41.121(a)(3)is denied by the APJ, a request to stay theinterference may be made to the Director of theUSPTO under 37 CFR 1.993. A request to stay aninterference under 37 CFR 1.993 will be decided bythe Chief Administrative Patent Judge of the Board.

III. REQUEST FOR REEXAMINATION FILEDDURING INTERFERENCE

In view of the provisions of 37 CFR 1.913, “[a]nyperson may, at any time during the period ofenforceability of a patent” file a request for interpartes reexamination. Under 37 CFR 41.8(a), thepatent owner must notify the Board that a requestfor reexamination was filed within twenty days ofreceiving notice of the request having been filed.Such requests for reexamination will be processedin the normal manner. No delay, or stay, of thereexamination will occur where the third partyrequester is not a party to the interference, or wherethe requester is a party to the interference but doesnot timely petition for a stay or delay. If the examinerorders reexamination pursuant to 37 CFR 1.931 andsubsequently, in the reexamination proceeding,rejects a patent claim corresponding to a count inthe interference, the attention of the Board shall becalled to the rejection.

IV. PETITION TO STAY REEXAMINATIONPROCEEDING BECAUSE OF INTERFERENCE

Any petition to stay an inter partes reexaminationproceeding, because of an interference, which is filed

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prior to the first Office action in the reexaminationproceeding will not be considered, and will bereturned to the party submitting the petition, or itwill be expunged, if the petition has been scannedinto the Office's IFW system prior to its discovery.See 37 CFR 1.939 and MPEP § 2625. The decisionreturning or expunging such a premature petitionwill be made of record in the reexamination file. Apetition to stay the reexamination proceedingbecause of the interference may be filed by the patentowner after the first Office action in thereexamination proceeding. If a party to theinterference, other than the patent owner, is also arequester of the reexamination, that party may alsopetition to stay the reexamination proceeding afterthe first Office action. If the party to the interferenceother than patent owner is not the reexaminationrequester, any petition by that party is improperunder 37 CFR 1.905 and will not be considered. Anysuch improper petitions will be returned to the partysubmitting the same. Premature petitions to stay thereexamination proceedings, i.e., those filed prior tothe first Office action in the reexaminationproceeding, will be returned by a Legal Advisor ofthe Office of Patent Legal Administration (OPLA)as premature. Petitions to stay filed subsequent tothe date of the first Office action in thereexamination proceeding will be referred to OPLAfor decision by a Senior Legal Advisor of that Office.All decisions on the merits of petitions to stay areexamination proceeding because of an interferencewill be made in OPLA.

V. ACTION IN INTERFERENCE FOLLOWINGREEXAMINATION

If one or more claims of a patent which is involvedin an interference are canceled or amended by theissuance and publication of a reexaminationcertificate, the Board must be promptly notified.

Upon issuance and publication of the reexaminationcertificate, the patent owner must notify the Boardof such issuance.

2686.03 Copending Reexamination andReissue Proceedings [R-07.2015]

37 CFR 1.991 Merger of concurrent reissue application andinter partes reexamination proceeding.

If a reissue application and an inter partes reexaminationproceeding on which an order pursuant to § 1.931 has beenmailed are pending concurrently on a patent, a decision may bemade to merge the two proceedings or to suspend one of thetwo proceedings. Where merger of a reissue application and aninter partes reexamination proceeding is ordered, the mergedproceeding will be conducted in accordance with §§ 1.171through 1.179, and the patent owner will be required to placeand maintain the same claims in the reissue application and theinter partes reexamination proceeding during the pendency ofthe merged proceeding. In a merged proceeding the third partyrequester may participate to the extent provided under §§ 1.902through 1.997 and 41.60 through 41.81, except that suchparticipation shall be limited to issues within the scope of interpartes reexamination. The examiner’s actions and any responsesby the patent owner or third party requester in a mergedproceeding will apply to both the reissue application and the inter partes reexamination proceeding and be physically enteredinto both files. Any inter partes reexamination proceedingmerged with a reissue application shall be concluded by thegrant of the reissued patent.

37 CFR 1.937 Conduct of inter partes reexamination.

(a) All inter partes reexamination proceedings, includingany appeals to the Patent Trial and Appeal Board, will beconducted with special dispatch within the Office, unless theDirector makes a determination that there is good cause forsuspending the reexamination proceeding.

*****

37 CFR 1.995 Third party requester’s participation rightspreserved in merged proceeding.

When a third party requester is involved in one or moreproceedings, including an inter partes reexaminationproceeding, the merger of such proceedings will be accomplishedso as to preserve the third party requester’s right to participateto the extent specifically provided for in these regulations. Inmerged proceedings involving different requesters, any paperfiled by one party in the merged proceeding shall be served onall other parties of the merged proceeding.

37 CFR 1.997 Issuance and publication of inter partesreexamination certificate concludes inter partesreexamination proceeding.

(a) To conclude an inter partes reexamination proceeding,the Director will issue and publish an inter partes reexaminationcertificate in accordance with 35 U.S.C. 316 setting forth theresults of the inter partes reexamination proceeding and thecontent of the patent following the inter partes reexaminationproceeding.

*****

(d) If a certificate has been issued and published whichcancels all of the claims of the patent, no further Officeproceedings will be conducted with that patent or any reissueapplications or any reexamination requests relating thereto.

(e) If the inter partes reexamination proceeding isterminated by the grant of a reissued patent as provided in §1.991, the reissued patent will constitute the reexaminationcertificate required by this section and 35 U.S.C. 316.

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*****

37 CFR 1.176 Examination of reissue.

(a) A reissue application will be examined in the samemanner as a non-reissue, non-provisional application, and willbe subject to all the requirements of the rules related tonon-reissue applications. Applications for reissue will be actedon by the examiner in advance of other applications.

*****

The general policy of the Office is that theexamination of a reissue application and an interpartes reexamination proceeding will not beconducted separately at the same time as to aparticular patent. The reason for this policy is topermit timely resolution of both the reissue and thereexamination to the extent possible and to preventinconsistent, and possibly conflicting, amendmentsfrom being introduced into the two files on behalfof the patent owner. If both a reissue application anda reexamination proceeding are pending concurrentlyon a patent, a decision will normally be made tomerge the reissue application examination and thereexamination or to stay one of the two. See In reOnda, 229 USPQ 235 (Comm’r Pat. 1985). Thedecision as to whether the reissue applicationexamination and the reexamination proceeding areto be merged, or which of the two (if any) is to bestayed, is made in OPLA.

Where a reissue application and a reexaminationproceeding are pending concurrently on a patent, thepatent owner, i.e., the reissue applicant, has aresponsibility to notify the Office of such. 37 CFR1.178(b), 1.565(a), and 1.985. The patent ownershould file in the reissue application, as early aspossible, a Notification of Concurrent Proceedingspursuant to 37 CFR 1.178(b) in order to notify theOffice in the reissue application of the existence ofthe reexamination proceeding on the same patent.See MPEP § 1418. In addition, the patent ownershould file in the reexamination proceeding, as earlyas possible, a Notification of Concurrent Proceedingspursuant to 37 CFR 1.565(a) or 1.985 (dependingon whether the reexamination proceeding is an exparte reexamination proceeding or an inter partesreexamination proceeding) to notify the Office inthe reexamination proceeding of the existence of thetwo concurrent proceedings.

I. TIME FOR MAKING DECISION ON MERGINGOR STAYING THE PROCEEDINGS

A decision whether or not to merge the examinationof a reissue application and an inter partes reexamination proceeding, or to stay one of the two,will not be made prior to the mailing of the order toreexamine the patent pursuant to 37 CFR 1.931.Until such time as the reexamination is ordered, theexamination of the reissue application will proceed.A determination on the request for reexaminationshould not be delayed despite the existence of acopending reissue application, since 35 U.S.C.312(a) requires a determination within three monthsfollowing the filing date of the request. See MPEP§ 2641. If the decision on the request deniesreexamination (MPEP § 2647 ), the examination ofthe reissue application should be continued. Ifreexamination is to be ordered (MPEP § 2646), thesigned order should be (after review by the CentralReexamination Unit (CRU) Supervisory PatentReexamination Specialist (SPRS)) promptlyforwarded to the CRU support staff for mailing; nofirst Office action will accompany the decisionordering reexamination. At the same time that thesigned order is forwarded to OPLA, (A) OPLAshould be notified that the proceedings are ready forconsideration of merger, and (B) if any of thereexamination file, the reissue application, and thepatent file are paper files, they should be handdelivered to OPLA.

If a reissue application is filed during the pendencyof a reexamination proceeding, OPLA should benotified, as promptly as possible after theproceedings are ready for consideration of merger.If any of the reexamination file, the reissueapplication, and the patent file are paper files, theyshould be hand delivered to OPLA at the time of thenotification to OPLA.

The decision on whether or not to merge the reissueapplication examination and the reexaminationproceeding or which (if any) is to be stayed(suspended), will generally be made as promptly aspossible after receipt of the notification to OPLA,and delivery of all the paper files to OPLA.

Until a decision is mailed merging the reissueapplication examination and the reexamination

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proceeding, or staying one of them, prosecution inthe reissue application and the reexaminationproceeding will continue and be conductedsimultaneously, but separately.

The Office may in certain situations issue acertificate at the termination of the prosecution of areexamination proceeding, even if a copendingreissue application or another reexamination requesthas already been filed.

II. CONSIDERATIONS IN DECIDING WHETHERTO MERGE THE REISSUE ANDREEXAMINATION OR WHETHER TO STAY ONEOF THEM

The decision on whether to merge the reissueapplication examination and reexaminationproceeding, or stay one of them, will be made on acase-by-case basis. The decision to merge, or not tomerge, is within the sole discretion of the Office tofacilitate/carry out the orderly operation of the Officein addressing the proceedings. The status of thereissue application and the reexamination proceedingwill be taken into account in the decision as towhether merger will be ordered, or one of the twoproceedings stayed. Where there is “good cause” tostay the reexamination proceeding, the Director maydo so pursuant to 35 U.S.C. 314(c).

A. Reissue About To Issue, Reexamination Requested

If the reissue patent will issue before thedetermination on the reexamination request must bemade, the determination on the request shouldnormally be made after the granting of the reissuepatent; and then the determination should be madeon the basis of the claims in the reissue patent. Thereexamination, if ordered, would then be based onthe reissue patent claims rather than the originalpatent claims. Since the reissue application wouldno longer be pending, the reexamination would beprocessed in a normal manner.

Where a reissue patent has been issued, thedetermination on the request for reexaminationshould specifically point out that the determinationhas been made on the claims of the reissue patentand not on the claims of the original patent. Anyamendment made in the reexamination proceeding

should treat the changes made by the reissue as thetext of the patent, and all bracketing and underliningmade with respect to the patent as changed by thereissue. Note that the reissue claims used as thestarting point in the reexamination proceeding mustbe presented in the reexamination proceeding as a“clean copy.” Thus, words bracketed in the reissuepatent claim(s) would not appear at all in thereexamination clean copy of the claim(s). Also,words that were added via the reissue patent willappear in italics in the reissue patent, but must appearin plain format in the reexamination clean copy ofthe claim(s).

If a reissue patent issues on the patent underreexamination after reexamination is ordered, thenext action from the examiner in the reexaminationshould point out that further proceedings in thereexamination will be based on the claims of thereissue patent and not on the patent surrendered.Form paragraph 22.05 may be used in the Officeaction.

¶ 22.05 Reexamination (Ex Parte or Inter Partes) Based onReissue Claims

In view of the surrender of original Patent No. [1] and thegranting of Reissue Patent No. [2] which issued on [3], allsubsequent proceedings in this reexamination will be based onthe reissue patent claims.

Where the reissue patent has issued prior to the filingof a request for reexamination of the original patent,see MPEP § 2640.

B. Reissue Pending, Reexamination Request Filed

Where a reissue patent will not be granted prior tothe expiration of the three-month period for makingthe determination on the reexamination request, adecision will be made after an order to reexamineis issued as to whether the reissue applicationexamination and the reexamination proceeding areto be merged, or which of the two (if any) is to bestayed. In this situation, no first Office action willhave accompanied the order for reexamination.

In making a decision on whether or not to merge thereissue application examination and thereexamination proceeding, consideration will begiven as to whether issues are raised in the reissueapplication that would not be proper for

2600-152Rev. 10.2019, June 2020


consideration in reexamination and/or not be properfor comment by the reexamination third partyrequester. If such issues are raised, merger wouldordinarily not be ordered, and one of the twoproceedings stayed. Consideration will also be givento the status of the reissue application examinationat the time the order to reexamine the patent pursuantto 37 CFR 1.931 is mailed. For example, if thereissue application is on appeal to the Board or tothe courts, that fact would be considered in makinga decision whether to merge the reissue applicationexamination and the reexamination proceeding orstay one of them. See In re Scragg, 215 USPQ 715(Comm’r Pat. 1982), In re Stoddard, 213 USPQ386 (Comm’r Pat. 1982).

If merger of the reissue application examination andthe reexamination proceeding is ordered, the ordermerging them will also require that the patent ownerplace the same claims in the reissue application andin the reexamination proceeding for purposes of themerger. The decision to merge may require anamendment to be filed by the patent owner to provideidentical sets of claims, within a specified time setin the decision to merge.

If merger would be appropriate, but the examinationof the reissue application has progressed to a pointwhere a merger is not desirable at that time, then thereexamination proceeding will generally be stayeduntil the reissue application examination is completeon the issues then pending. After completion of theexamination on the issues then pending in the reissueapplication examination, the stay of thereexamination proceeding will be removed. Theproceedings would be merged if the reissueapplication is pending, or the reexaminationproceeding will be conducted separately if the reissueapplication has become abandoned. The reissueapplication examination would be reopened, ifnecessary, for merger of the reexaminationproceeding therewith. If a stay of a reexaminationproceeding has been removed following a reissueapplication examination, the first Office action willset a shortened statutory period for response of onemonth or thirty days (whichever is longer) unless alonger period for response clearly is warranted bythe nature of the examiner’s action. The secondOffice action will normally be final and will also seta one month or thirty days period for response. These

shortened periods are considered necessary toprevent undue delay in concluding the proceedingsand also to proceed with “special dispatch” in viewof the earlier stay.

If the reissue application examination andreexamination proceedings are merged, the issuanceof the reissue patent will also serve as the interpartes reexamination certificate under 37 CFR1.997, and the reissue patent will so indicate.

C. Reexamination Proceedings Underway, ReissueApplication Filed

When a reissue application is filed after an interpartes reexamination request has been filed, OPLAshould be notified, as promptly as possible. Adetermination will be made as to whetherreexamination should be ordered. If reexaminationis ordered, no first Office action will accompany thedecision ordering reexamination. The order and anyof the files that are paper files should then be handdelivered to OPLA.

Where reexamination has already been ordered priorto the filing of a reissue application, OPLA shouldbe notified, as promptly as possible, that theproceedings are ready for consideration of merger.If any of the reexamination file, the reissueapplication, and the patent file are paper files, theyshould be hand delivered to OPLA at the time of theemail notification to OPLA.

In making a decision on whether or not to merge thereissue application examination and thereexamination proceeding, consideration will begiven as to whether issues are raised in the reissueapplication that would not be proper forconsideration in reexamination and/or not be properfor comment by the reexamination third partyrequester. If such issues are raised, merger wouldordinarily not be ordered, and one of the twoproceedings stayed. In addition, consideration willalso be given to the status of the reexaminationproceeding. For example, if the reexaminationproceeding is on appeal to the Board or to the U.S.Court of Appeals for the Federal Circuit, or a Noticeof Intent to Issue a Reexamination Certificate wasissued for the reexamination proceeding, that factwould be considered in making a decision whether

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to merge the reissue application examination andthe reexamination proceeding or stay one of them.

D. Examiner Assignment

With respect to the appropriate examiner assignmentof the merged reexamination proceeding and thereissue application examination, see MPEP § 2636.

III. CONDUCT OF MERGED REISSUE ANDREEXAMINATION PROCEEDING

The decision ordering merger will set forth thepractice and procedure to be followed in theexamination and prosecution of the merged reissueand inter partes reexamination proceeding. Anyquestions as to the practice and procedure set forthshould be referred to OPLA. In addition, theexaminer should consult with OPLA prior to issuingany Office action in the merged proceeding, in thesame manner as he or she would consult with theOPLA in an inter partes reexamination proceedingthat has not been merged.

Where merger is ordered, the patent owner isrequired to maintain identical amendments in thereissue application and the reexamination file forpurposes of the merged proceeding. The maintenanceof identical amendments in both files is required aslong as the reissue and reexamination proceedingsremain merged. Where identical amendments arenot present in both files at the time merger is ordered,the patent owner will be required to submit anappropriate amendment placing the sameamendments in both proceedings. This may beaccomplished by amending either of the twoproceedings (the reissue application or thereexamination) or both of them, as appropriate. Thepatent owner must not address any issue ofpatentability in the amendment. Amendments in amerged reexamination/reissue proceeding aresubmitted under 37 CFR 1.173, in accordance withreissue practice. In the event that an amendment tomake the claims the same in each file is required bythe merger decision (identical amendments to beplaced in all files) but is not timely submitted, anyclaim that does not contain identical text in all of themerged proceedings should be rejected under 35U.S.C. 112, paragraph 2, as being indefinite as to

the content of the claim, and thus failing toparticularly point out the invention.

IV. INTER PARTES REEXAMINATION, EXPARTE REEXAMINATION, AND REISSUEAPPLICATION FOR THE SAME PATENT

It will sometimes happen that an inter partesreexamination, an ex parte reexamination and areissue application will all be copending. In thesesituations, OPLA should be notified by, as promptlyas possible after the reissue application reaches theTC, that the proceedings are ready for considerationof merger. If any of the reexamination files, thereissue application, and the patent file are paper files,they should be hand delivered to OPLA at the timeof the notification to OPLA. The three most commonexamples of this are as follows:

(A) A reissue application was previously mergedwith an ex parte reexamination, and then an interpartes reexamination is filed. An order to reexamineis prepared, and the signed order and any paper filesshould be promptly processed for mailing of theorder, and then consideration by OPLA as to whetheror not to merge the proceedings. OPLA should benotified of potential merger consideration.

(B) A reissue application was previously mergedwith an inter partes reexamination, and then arequest for ex parte reexamination is filed. After anorder to reexamine has been issued, the TC QualityAssurance Specialist (QAS) will retain jurisdictionover the merged reexamination proceeding until thepatent owner’s statement and any reply by the exparte third party requester have been received forthe ex parte reexamination request, or until the timefor filing the same expires. OPLA should then benotified that the proceedings are ready forconsideration of merger. If any of the reexaminationfiles, the reissue application, and the patent file arepaper files, they should be hand delivered to OPLAat the time of the notification to OPLA.

(C) An inter partes reexamination was mergedwith an ex parte reexamination, and then a reissueapplication is filed. Once the reissue application isreceived, OPLA should be promptly notified thatthe proceedings are ready for consideration ofmerger. If any of the reexamination files, the reissueapplication, and the patent file are paper files, they

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should be hand delivered to OPLA at the time of thenotification to OPLA.

The decision to merge the three proceedings byOPLA will provide the guidance for conducting themerged proceeding. It is to be noted that the mergerwill not be carried out pursuant to MPEP Chapter2200. Prosecution prior to the point of merger willremain as-is, in the files.

In the event the inter partes reexaminationprosecution is terminated and only the ex partereexamination and the reissue application remain,the prosecution will no longer be governed by thepresent section. Any further prosecution will begoverned by MPEP Chapter 2200; specifically seeMPEP § 2285.

V. PETITION TO MERGE REISSUEAPPLICATION AND INTER PARTESREEXAMINATION PROCEEDING OR TO STAYEITHER OF THE TWO BECAUSE OF THEEXISTENCE OF THE OTHER

No petition to merge the reexamination proceedingand the reissue application examination, or stay oneof them, is necessary, since the Office will generally,sua sponte , make a decision to merge thereexamination proceeding and the reissue applicationexamination or to stay one of them. If any petitionto merge the reexamination proceeding and thereissue application examination, or to stay one ofthem because of the other, is filed prior to thedetermination (37 CFR 1.923) and the order toreexamine (37 CFR 1.931), it will not be considered,but will be returned to the party submitting the sameby the CRU (or it will be expunged, if the petitionhas been scanned into the Office's IFW system priorto its discovery), regardless of whether the petitionis filed in the reexamination proceeding, the reissueapplication, or both. This is necessary in order toprevent premature papers relating to thereexamination proceeding from being filed. Thedecision returning or expunging such a prematurepetition will be made of record in both thereexamination file and the reissue application file.See MPEP § 2667.

The patent owner may file a petition under 37 CFR1.182 to merge a reexamination proceeding and areissue application examination, or stay one of them

because of the other, after the order to reexamine(37 CFR 1.931), in the event the Office has not actedprior to that date to merge or stay. The third partyrequester does not have a right to file a petition under37 CFR 1.182 to merge a reexamination proceedingand a reissue application examination, since thereexamination third party requester does not haveany standing to request relief with respect to a reissueapplication, to which requester cannot be a party.No such standing is provided for anywhere in thestatute. Instead of filing a petition under 37 CFR1.182 to merge a reexamination proceeding with areissue application, a third party requester may filea notification of concurrent proceedings pursuant to37 CFR 1.985(b). After being notified of theexistence of a reissue application and afterconsideration of the merger and suspension optionsbecomes ripe, the Office of Patent LegalAdministration would sua sponte consider anyaction to be taken after the order to reexamine (37CFR 1.931), in the event the Office has not actedprior to that date to merge or stay. The requesterdoes have the right to file a petition under 37 CFR1.182 to stay the reexamination proceeding that itrequested.

Any merger or stay petition under 37 CFR 1.182filed prior to the initial Office action on the meritsmust also be filed under 37 CFR 1.183 to waive therequirement of 37 CFR 1.939(b) that no paper shallbe filed prior to the initial Office action on the meritsof the inter partes reexamination proceeding. Anypetition to merge or stay which is filed by a partyother than the patent owner will not be considered,but will be returned to that party by OPLA (orexpunged by OPLA, if the petition was inadvertentlyalready entered).

All petitions to merge or stay which are filed by thepatent owner or the third party requester subsequentto the date of the order for reexamination will bereferred to OPLA for decision.

VI. FEES IN MERGED PROCEEDINGS

Where the proceedings have been merged and apaper is filed which requires payment of a fee (e.g.,excess claims fee, extension of time fee, petitionfees, appeal fees, brief fees, oral hearing fees), onlya single fee need be paid. For example, only one fee

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need be paid for an appellant brief, even though thebrief relates to merged multiple examinations andcopies of the brief are filed for each file in the merger(as is required). As to excess claim fees, reissuepractice will control.

VII. INTERVIEWS IN MERGED PROCEEDINGS

Pursuant to 37 CFR 1.955, an interview whichdiscusses the merits of a proceeding is not permittedin an inter partes reexamination proceeding. Thus,in a merged proceeding of an inter partesreexamination and a reissue application, there willbe no inter partes interview as to the substance ofthe proceeding. Also, there will be no separate exparte interview as to the substance of the proceedingwith either the patent owner (the reissue applicant)or the third party requester (of the reexamination).Accordingly, where a party requests any informationas to the merits of the merged proceeding, theexaminer will not conduct an interview with thatparty to provide the information. Further, an informalamendment by the patent owner (the reissueapplicant) will not be accepted, because that wouldbe tantamount to an ex parte interview. Allcommunications between the Office and the patentowner (and the third party requester) which aredirected to the merits of the merged proceeding mustbe in writing and filed with the Office for entry intothe record of the proceeding.

VIII. EXAMINER’S AMENDMENT TO PLACEPROCEEDING IN CONDITION FOR ALLOWANCEIN MERGED REISSUE/ INTER PARTESREEXAMINATION

As pointed out immediately above, interviews, bothpersonal and telephone are not permitted in a mergedreissue/ inter partes reexamination proceeding. Thus,the examiner is not permitted to telephone the patentowner/reissue applicant and obtain authorization tomake an amendment. Accordingly, the only timesthat an examiner’s amendment can be made inconjunction with a Notice of Allowability are wherethe patent owner authorization need not be obtained.Such amendments include:

(A) An examiner’s amendment to deal withformal matters such as grammar, incorrect spelling,or incorrect number; i.e., matters that do not involve

a rejection, do not go to the merits, and do notrequire the examiner to obtain approval.

(B) An examiner’s amendment to change thetitle.

See also MPEP § 1302.04 et seq. as to examiner’samendments not needing authorization by anapplicant or a patent owner. Note, however, that ina merged reissue/ inter partes reexaminationproceeding (as opposed to an application per se) allsuch examiner’s amendments must be made byformal examiner’s amendment accompanyingthe Notice of Allowability, in order to providenotice of the changes made in the patent beingreexamined to both the patent owner/reissueapplicant and the third party requester.

Note that any change going to the merits of the case(i.e., more than a formal matter) could not be madeby examiner’s amendment accompanying the Noticeof Allowability. Rather, a change going to the meritswould require (A) reopening of prosecution with theapproval of the CRU Director, (B) an Office actionsuggesting the change to the patent owner/reissueapplicant, (C) a formal amendment submitted bypatent owner/reissue applicant, and (D) anopportunity for the third party requester to commenton the patent owner/applicant’s submission.

2686.04 Reexamination and LitigationProceedings [R-10.2019]

35 U.S.C. 314 Conduct of inter partes reexaminationproceedings.

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[Editor Note: As in effect prior to September 16, 2012]


35 U.S.C. 317 Inter partes reexamination prohibited.

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(b) FINAL DECISION.— Once a final decision has beenentered against a party in a civil action arising in whole or inpart under section 1338 of title 28, that the party has notsustained its burden of proving the invalidity of any patent claimin suit or if a final decision in an inter partes reexaminationproceeding instituted by a third-party requester is favorable to

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the patentability of any original or proposed amended or newclaim of the patent, then neither that party nor its privies maythereafter request an inter partes reexamination of any suchpatent claim on the basis of issues which that party or its priviesraised or could have raised in such civil action or inter partesreexamination proceeding, and an inter partes reexaminationrequested by that party or its privies on the basis of such issuesmay not thereafter be maintained by the Office, notwithstandingany other provision of this chapter. This subsection does notprevent the assertion of invalidity based on newly discoveredprior art unavailable to the third-party requester and the Patentand Trademark Office at the time of the inter partesreexamination proceedings.

35 U.S.C. 318 Stay of litigation.


Once an order for inter partes reexamination of a patent hasbeen issued under section 313, the patent owner may obtain astay of any pending litigation which involves an issue ofpatentability of any claims of the patent which are the subjectof the inter partes reexamination order, unless the court beforewhich such litigation is pending determines that a stay wouldnot serve the interests of justice.

37 CFR 1.987 Suspension of inter partes reexaminationproceeding due to litigation.

If a patent in the process of inter partes reexamination is orbecomes involved in litigation, the Director shall determinewhether or not to suspend the inter partes reexaminationproceeding.

37 CFR 1.907 Inter partes reexamination prohibited.*****

(b) Once a final decision has been entered against a partyin a civil action arising in whole or in part under 28 U.S.C. 1338that the party has not sustained its burden of proving invalidityof any patent claim-in-suit, then neither that party nor its priviesmay thereafter request inter partes reexamination of any suchpatent claim on the basis of issues which that party, or its privies,raised or could have raised in such civil action, and an interpartes reexamination requested by that party, or its privies, onthe basis of such issues may not thereafter be maintained by theOffice.

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35 U.S.C. 311 permits a request for inter partesreexamination to be filed “at any time.” Thus,requests for inter partes reexamination can be filedwhere the patent (for which reexamination isrequested) is involved in concurrent litigation. Theguidelines set forth below will generally governOffice handling of inter partes reexaminationrequests where there is concurrent litigation.

I. COURT-ORDERED/SANCTIONEDREEXAMINATION PROCEEDING, LITIGATIONSTAYED FOR REEXAMINATION, OR EXTENDEDPENDENCY OF REEXAMINATION PROCEEDINGCONCURRENT WITH LITIGATION

Where a request for reexamination indicates thatlitigation is stayed for the purpose of reexamination,all aspects of the proceeding will be expedited to theextent possible. Cases will be taken up for action atthe earliest time possible, and Office actions in thesereexamination proceedings will normally set aone-month shortened statutory period for responserather than the two months usually set inreexamination proceedings. Response periods maybe extended only upon a strong showing of sufficientcause (see MPEP § 2665). The statutory requirementfor “special dispatch” in reexamination oftenbecomes important, and sometimes critical, incoordinating the concurrent litigation andreexamination proceedings.

II. FEDERAL COURT DECISION KNOWN TOEXAMINER AT THE TIME THEDETERMINATION ON THE REQUEST FORREEXAMINATION IS MADE

If a federal court decision on the merits of a patentis known to the examiner at the time thedetermination on the request for inter partesreexamination is made, the following guidelines willbe followed by the examiner:

(A) The Third Party Requester Was Not a Partyto the Litigation.

When the initial question as to whether theart raises a question of patentability as to a patentclaim is under consideration, the existence of a finalcourt decision of claim validity in view of the sameor different art does not necessarily preclude thepresence of such a question. This is true because ofthe different standards of proof employed by thedistrict courts and the Office and the differentstandards of claim interpretation used inreexamination proceedings involving unexpiredpatent claims. See for example In re Zletz, 893 F.2d319, 322, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989)(manner of claim interpretation that is used by courtsin litigation is not the manner of claim interpretationthat is applicable during prosecution of a pendingapplication before the PTO) and In re Etter, 756

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F.2d 852, 225 USPQ 1 (Fed. Cir. 1985) (the 35U.S.C. 282 presumption of patent validity has noapplication in reexamination proceedings). Thus,while the Office may accord deference to factualfindings made by the court, the determination ofwhether a basis for reexamination exists will bemade independently of the court’s decision on validity, since the decision is not controlling on theOffice. See In re Swanson et al, 540 F.3d 1368,1378 (Fed. Cir. 2008).

A non-final holding of claim invalidity orunenforceability will also not be controlling on thequestion of whether a substantial new question ofpatentability or reasonable likelihood of prevailingis present.

Only a final holding of claim invalidity orunenforceability (after all appeals) is controlling onthe Office. In such cases, a substantial new questionof patentability or reasonable likelihood of prevailingwould not be present as to the claims held invalidor unenforceable. See Ethicon v. Quigg, 849 F.2d1422, 7 USPQ2d 1152 (Fed. Cir. 1988).

(B) The Third Party Requester Was a Party tothe Litigation.

Final Holding upholding validity: Theprovisions of 35 U.S.C. 317(b) and 37 CFR 1.907(b)apply. Where a final decision was entered against aparty in a federal court civil action (arising in wholeor in part under 28 U.S.C. 1338) that the party didnot sustain its burden of proving invalidity of apatent claim in suit, that party and its privies maynot request inter partes reexamination of any suchpatent claim on the basis of issues which that partyor its privies raised or could have raised in the civilaction. Further, an inter partes reexaminationalready requested by that party, or its privies, on thebasis of such issues will not be maintained by theOffice, i.e., the proceeding will be concluded. Note,however, that the statute does not preclude an exparte reexamination by the same third partyrequester. See also subsection V. below.

In view of the above, when the examiner is awarethat the third party requester was a party to previousfederal court litigation as to the patent for which inter partes reexamination has been requested, theexaminer must determine:

(1) Was the federal court decision adverseto the third party requester as to at least one claimof the patent?

(2) Was the federal court decision a finaldecision, after all appeals?

(3) Is the issue being raised in thereexamination request the same issue as was raisedin the federal court during the civil action, or an issuethat the third party requester could have raised inthe federal court during the civil action?

- If the answer to all of questions (1)-(3) is “yes”for one or more (but not all) of the claims for whichreexamination was requested in the proceeding; thoseclaims will not be treated. The examiner’s actionwill point out the claims not treated and the reasonwhy, i.e., a discussion of the above considerations(1)-(3). The guidelines set forth above in subsectionII.(A) will be used for the claims remaining.

- If the answer to question (1) or to question (3)is “no” for all claims for which reexamination wasrequested, then the examination of the reexaminationproceeding will proceed without any discussion onthe record of considerations (1)-(3), using theguidelines set forth above in subsection II.(A).

- If, for any claim for which reexamination wasrequested, the answer to both of questions (1) and(3) is “yes”, but the answer to question (2) is “no”,then examination of the reexamination proceedingwill proceed using the guidelines set forth above insubsection II.(A). The examiner’s action will containa discussion of considerations (1)-(3).

If the examiner subsequently becomes aware thatthe federal court decision has become final or if theanswer to each of questions (1)-(3) is “yes” for allclaims for which reexamination was requested inthe proceeding, then the examiner should notify hisor her SPRS, who will contact OPLA for furtherguidance. See also subsection V. below.

Final Holding of invalidity: A final holding of claiminvalidity or unenforceability (after all appeals) iscontrolling on the Office. In such cases, a substantialnew question of patentability or reasonablelikelihood of prevailing would not be present as tothe claims held invalid or unenforceable. See Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152

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(Fed. Cir. 1988). Where all claims for whichreexamination was requested are affected, thereexamination will be vacated/terminated by theCRU Director. A non-final holding of claiminvalidity or unenforceability, however, will not becontrolling on the question of whether a substantialnew question of patentability or reasonablelikelihood of prevailing is present.

(C) Specific Situations.

For a discussion of the policy in specific situationswhere a federal court decision has been issued, seeMPEP § 2642 and subsection V. below.

Note the following two Federal Circuit decisionsinvolving reexamination proceedings where the courtaffirmed the Office’s rejections even though paralleldistrict court proceeding upheld the validity of theclaims. In re Trans Texas Holdings Corp., 498 F.3d1290, 83 USPQ2d 1835 (Fed. Cir. 2007) and In reTranslogic Technology, Inc., 504 F.3d 1249, 84USPQ2d 1929 (Fed. Cir. 2007).

In Trans Texas, the patent being reexamined wassubject to an infringement suit, in which the districtcourt had issued its claim construction ruling (in adistrict court opinion) as to the definition of a term.The parties ultimately reached a settlement beforetrial, and the district court issued an “Order ofDismissal with Prejudice.” The patent owner reliedon that district court claim construction ruling in areexamination proceeding, and argued that the Officewas bound by that district court claim constructionruling, under the doctrine of issue preclusion. TheFederal Circuit stated that issue preclusion could notbe applied against the Office based on a district courtholding in an infringement proceeding, since theOffice was not a party to that earlier infringementproceeding.

In Translogic, a district court infringement suitproceeded in parallel with a reexaminationproceeding. The district court upheld the validity ofthe patent in the infringement suit, while thereexamination examiner found the claim combinationto be obvious. The examiner’s rejection was affirmedby the Board. The defendant (the alleged infringer)of the infringement suit appealed the district courtdecision to the Federal Circuit, while the patent

owner appealed the Board’s decision to the FederalCircuit. The Federal Circuit consolidated the appeals,and then addressed only the patent owner’sreexamination appeal from the Board. The FederalCircuit affirmed the examiner’s conclusion ofobviousness by relying upon and providing anextensive discussion of KSR International Co. v.Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).

Note also In re Swanson et al.,, 540 F.3d 1368, 88USPQ 2d 1196 (Fed. Cir. 2008) where the FederalCircuit held that the prior federal court judgmentupholding validity over a specific prior art reference(in Abbott Labs. v. Syntron Bioreseach, Inc., 334F.3d 1343 (Fed. Cir. 2003)), did not preclude theOffice’s finding that a substantial new question ofpatentability existed as to the same claims based onthe same prior art reference applied in the samemanner in the subsequent ex parte reexaminationproceeding, and did not preclude the Office’s findingthat the patent claims were unpatentable.

Finally, see In re Baxter International Inc., 678 F.3d1357, 102 USPQ2d 1925 (Fed. Cir. 2012) (patentreexamination should take notice of a court decisionbut the Office need not come to the same conclusionas the court).

III. REEXAMINATION WITH CONCURRENTLITIGATION BUT ORDERED PRIOR TOFEDERAL COURT DECISION

In view of the statutory mandate to make thedetermination on a request for reexamination withinthree months, the determination on the request basedon the record before the examiner will be madewithout awaiting a decision by the federal court. Itis not realistic to attempt to determine what issueswill be treated by the federal court prior to thecourt’s decision. Accordingly, the determination onthe request will be made without considering theissues allegedly before the court. If reexaminationis ordered, the reexamination generally (seediscussion immediately below) will continue untilthe Office becomes aware that a court decision hasissued. At such time, the request will be reviewedin accordance with the guidelines set forth below.

In Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d1152 (Fed. Cir. 1988), the U.S. Court of Appeals for

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the Federal Circuit stated the following as to theOffice’s authority to stay a reexamination processpending the outcome of a federal district court casewhere invalidity is an issue:

“Whatever else special dispatch means, it doesnot admit of an indefinite suspension ofreexamination proceedings pending conclusionof litigation. If it did, one would expect to findsome intimation to that effect in the statute, forit would suggest the opposite of the ordinarymeaning. But there is none.”

“The Commissioner… has no inherentauthority, only that which Congress gives. Itdid not give him authority to stayreexaminations; it told him to conduct themwith special dispatch. Its silence about stayscannot be used to countermand thatinstruction.”

The Ethicon case was decided as to ex partereexamination, for which 35 U.S.C. 305 dictates inits last sentence:

“All reexamination proceedings under thissection, including any appeal to the Board ofPatent Appeals and Interferences, will beconducted with special dispatch within theOffice.”

For inter partes reexamination, however, 35 U.S.C.314 provides a qualification as to conductingreexamination with special dispatch:

“Unless otherwise provided by the Directorfor good cause, all inter partes reexaminationproceedings under this section, including anyappeal to the Board of Patent Appeals andInterferences, shall be conducted with specialdispatch within the Office.” [Emphasis added.]

35 U.S.C. 314 provides for special dispatch in interpartes reexamination “[u]nless otherwise providedby the Director for good cause.” Accordingly, wherethere is good cause for the Director of the USPTOto suspend (stay) reexamination proceedings pendingthe conclusion of litigation, a suspension will be

effected. This matter will be approached on acase-by-case basis. See subsection V. below for anactual situation where there was pending litigationhaving the potential to terminate a reexaminationprosecution under 35 U.S.C. 317(b), and asuspension was granted.

It should be noted that a suspension will not beconsidered on its merits prior to ordering ofreexamination. Until that point, there is noproceeding to suspend, and the Office must issue itsdecision on the request within the statutorilymandated three months. Also, suspension will notbe considered on its merits when there is anoutstanding Office action. In order to ensureconsideration on the merits of a petition to suspendwhere there is an outstanding Office action, thepatent owner must: (1) provide a complete responseto the outstanding Office action, and (2) include apetition to suspend under 37 CFR 1.182.

It should also be noted that if, pursuant to 35 U.S.C.318, a court stays litigation as to the patent beingreexamined, action in the reexamination proceedingwould not be suspended. This is so because actionin the reexamination proceeding would be neededto resolve the “issue of patentability of any claimsof the patent which are the subject of the inter partesreexamination order” set forth in 35 U.S.C. 318.

IV. FEDERAL COURT DECISION ISSUES AFTER INTER PARTES REEXAMINATION ORDERED

Pursuant to 37 CFR 1.985(a), the patent owner in an inter partes reexamination proceeding mustpromptly notify the Office of any federal courtdecision involving the patent.

Upon the issuance of a holding of claim invalidityor unenforceability by a federal court, reexaminationof those claims will continue in the Office until thedecision becomes final. A non-final court decisionconcerning a patent under reexamination shall haveno binding effect on a reexamination proceeding.

Where an inter partes reexamination proceeding iscurrently pending and a final federal court decisionissues after all appeals, the parties are required tonotify the Office of the final court decision. Thereexamination proceeding is reviewed to see if no

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substantial new question of patentability remains orreasonable likelihood of prevailing remains (as toone or more claims) due to a holding that patentclaims, which are under reexamination, are invalid.If the final court decision holds the claims to be notinvalid, and if a party to the reexaminationproceeding (such as, e.g., the patent owner) wishesthe Office to terminate the proceeding pursuant topre-AIA 35 U.S.C. 317(b), the party may notify theOffice of the final court decision by filing a grantablepetition under 37 CFR 1.182 to terminate prosecutionof the claims under reexamination which were finallyheld to be not invalid, in accordance with theguidelines set forth in subsection V below.

A final court holding of invalidity/unenforceabilityis binding on the Office. Upon the issuance of a finalholding of invalidity or unenforceability, the claimsheld invalid or unenforceable will be withdrawnfrom consideration in the reexamination if the Officeis notified of the final court decision. Thereexamination will continue as to any remainingclaims. If all of the claims being examined are finallyheld invalid or unenforceable, and if the Office isnotified of the final court decision, the reexaminationwill be vacated/terminated by the CRU Director asno longer containing a substantial new question ofpatentability or reasonable likelihood of prevailing.If not all claims being examined were held invalid,a substantial new question of patentability orreasonable likelihood of prevailing may still existas to the remaining claims. In such a situation, theremaining claims would be examined; and, as to theclaims held invalid, form paragraph 26.80 should beused at the beginning of the Office action.

¶ 26.80 Claims Held Invalid by Court, No Longer BeingReexamined

Claims [1] of the [2] patent are not being reexamined in viewof the final decision of [3]. Claims [1] were held invalid by the[4].

Examiner Note:

1. In bracket 1, insert the claims held invalid.

2. In bracket 2, insert the patentee (e.g., Rosenthal, J. Doe etal).

3. In bracket 3, insert the decision (e.g., ABC Corp. v. JohnDoe, 888 F. 3d 88, 999 USPQ2d 99 (Fed. Cir. 1999) or XYZCorp. v. Jones, 888 F. Supp. 2d 88, 999 USPQ2d 1024 (N.D.Cal. 1999)).

4. In bracket 4, insert the name of the court (e.g., the Courtof Appeals for the Federal Circuit, or the Federal District Court).

The issuance of a final court decision after allappeals (in a civil action arising in whole or in partunder 28 U.S.C. 1338) upholding validity during aninter partes reexamination, where the person whofiled the request was a party to the litigation, willhave the effect that the Office will discontinueexamination of all claims affected by the validityholding if a grantable petition under 37 CFR 1.182to terminate reexamination of those claims is filedin accordance with guidelines set forth in subsectionV. If the provisions of 37 CFR 1.907(b) apply suchthat all of the claims in the reexamination proceedingcannot be maintained, reexamination is terminated.If the provisions of 37 CFR 1.907(b) apply to someof the claims, but not all of the claims in theproceeding; those claims to which 37 CFR 1.907(b)applies will not be treated. The examiner’s actionwill point out the claims not treated, and the reasonwhy those claims cannot be maintained in thereexamination under 37 CFR 1.907(b). Action willbe given on the remaining claims. Note that theprovisions of 37 CFR 1.907(b) cannot be waivedsince they track the statute, pre-AIA 35 U.S.C. 317.See subsection V. below.

The issuance of a final court decision upholdingvalidity during an inter partes reexamination, wherethe person who filed the request was not a party tothe litigation, will have no binding effect on theexamination of the reexamination. This is becausethe court stated in Ethicon v. Quigg, 849 F.2d 1422,1428, 7 USPQ2d 1152, 1157 (Fed. Cir. 1988) thatthe Office is not bound by a court’s decisionupholding validity and should continue thereexamination. The court noted that district courtsand the Office use different standards of proof indetermining invalidity and unpatentability, and thus,on the same evidence, could quite correctly come todifferent conclusions. Specifically, invalidity in adistrict court must be shown by “clear andconvincing” evidence, whereas in the Office it issufficient to show non-patentability by a“preponderance” of the evidence. Since the “clearand convincing” standard is harder to satisfy thanthe “preponderance standard,” a court’s decisionupholding validity is not controlling. Deference will,however, ordinarily be accorded to the factualfindings of the court, where the evidence before theOffice and the court is the same. If sufficient reasons

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are present, claims upheld by the court may berejected in reexamination.

V. DISCUSSION OF EFFECT OF LITIGATIONWHERE REQUESTER WAS A PARTY TO THELITIGATION

A. Termination Pursuant to Pre-AIA 35 U.S.C. 317

A party to a pending inter partes reexaminationproceeding such as, e.g., the patent owner, mayrequest the Office to terminate prosecution of patentclaims under reexamination, which are finally heldto be not invalid by a federal court, by filing agrantable petition under 37 CFR 1.182 to terminateprosecution of those claims, in accordance with theguidance set forth below.

Congress specifically provided estoppel provisionsto shut down an inter partes reexamination of apatent claim when a “final decision” upholding thevalidity of that claim has been reached in a civilaction or in a prior inter partes reexaminationproceeding. See pre-AIA 35 U.S.C. 317(b); pre-AIA35 U.S.C. 315(c). Thus, if a party’s challenge to thevalidity of certain patent claims has been finallyresolved, either through civil litigation or the interpartes reexamination process, then (A) that party isbarred from making a subsequent request for interpartes reexamination (or filing a new civil action)challenging the validity of those same claims, and(B) “an inter partes reexamination previouslyrequested by that party or its privies on the basis ofsuch issues may not thereafter be maintained by theOffice.” Id.

The statute and legislative history of the estoppelprovisions make it clear that the inter partesreexamination of a claim (requested by a party) mustbe terminated once a final decision upholding thevalidity of that claim (challenged by the same party)has issued “after any appeals,” and not simply aftera district court decision which is still pending onappeal. If there remains any time for an appeal, or arequest for reconsideration, from a court (e.g., districtcourt or Federal Circuit) decision, or such action hasalready been taken, then the decision is not final,and the estoppel does not attach. While Congressdesired that the creation of an inter partesreexamination option would lead to a reduction in

expensive patent litigation, it nonetheless alsoprovided in the statute that a court validity challengeand inter partes reexamination of a patent may occursimultaneously; but once one proceeding finally endsin a manner adverse to a third party, then the issuesraised (or that could have been raised) with respectto the validity of a claim in that proceeding wouldhave estoppel effect on the same issues in the otherproceeding.

Pre-AIA 35 U.S.C. 317(b) provides, in pertinentpart:

“Once a final decision has been entered againsta party in a civil action arising in whole or inpart under section 1338 of title 28, that the partyhas not sustained its burden of proving theinvalidity of any patent claim in suit…, thenneither that party nor its privies may thereafterrequest an inter partes reexamination of anysuch patent claim on the basis of issues whichthat party or its privies raised or could haveraised in such civil action…, and an interpartes reexamination requested by that partyor its privies on the basis of such issues maynot thereafter be maintained by the Office,notwithstanding any other provision of thischapter. This subsection does not prevent theassertion of invalidity based on newlydiscovered prior art unavailable to thethird-party requester and the Patent andTrademark Office at the time of the inter partesreexamination proceedings.” [Emphasis added]

This is a statutory estoppel which can attach to an inter partes reexamination third party requester thatis also a party to litigation concerning the patent forwhich reexamination has been requested.

A grantable petition under 37 CFR 1.182 to terminateprosecution of claims under reexamination mustprovide evidence that the following requirements,which track the statutory requirements set forth inpre-AIA 35 U.S.C. 315(c), have been satisfied:

1. The third party requester was a party to thelitigation;

2. The decision is final, i.e., after all appeals;

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3. The court decided that the requester/party hadnot sustained its burden of proving the invalidity ofany claim in suit, which claim is also underreexamination; and

4. The issue(s) raised in the reexaminationproceeding are the same issue(s) that were raised orcould have been raised by the requester in the civilaction.

The evidence should include a copy of the districtcourt decision, any jury verdict, any decision by theU.S. Court of Appeals for the Federal Circuit(CAFC), including any mandate, any dismissal ofan appeal by the CAFC, and any ruling by the UnitedStates Supreme Court on a petition for certiorari.Submission of a copy of the district court’s docketis also recommended. The copy of the docket mayprovide evidence, for example, that no further appealhas been taken in the litigation, or if (and when) atrial has been held, where appropriate.

Regarding item no. 1, evidence that the third partyrequester was party to the litigation may be providedby filing a copy of the court decision or other courtdocument which provides the name of the requesteras, for example, a defendant in the litigation.

Regarding item no. 2, the petition must beaccompanied by evidence that the decision is final,after all appeals. If there remains any time for anappeal, or a request for reconsideration, from a court(e.g., district court or Federal Circuit) decision, orsuch action has already been taken, then the decisionis not final, and the estoppel does not attach. Suchevidence may include any decision by the CAFC,including any mandate, any dismissal of an appealby the CAFC, any ruling by the United StatesSupreme Court on a petition for certiorari, and/or acopy of the district court’s docket.

Regarding item no. 3 above, the evidence must showwhich claims were before the court at the time ofthe court’s decision. A “claim in suit” is a claim thatwas before the court at the time of the court’sdecision, and not merely a claim that was assertedat some point in the litigation. If a claim underreexamination was not the subject of the court’sdecision, then the estoppel provisions of pre-AIA35 U.S.C. 317(b) do not apply to the final outcomeof the litigation as to that patent claim, because there

is no “final decision that the party has not sustainedits burden of proving the invalidity” of that patentclaim. Thus, prosecution of the non-litigated claimswould not be “terminated” in the reexaminationproceeding.

Pre-AIA 35 U.S.C. 317(b) specifically requires adecision by the court that the requester “has notsustained its burden of providing the invalidity ofany patent claim in suit” (emphasis added). Thestatute does not refer, for example, to any patentclaim that “could have been” in suit. Pursuant to thestatute, the patent claims that were before the courtat the time of the court’s decision must initially bedetermined. Further, each claim that is determinedto be “in suit,” i.e., each claim that is determined tobe before the court at the time of the court’s decision,must have a corresponding final decision ofnon-invalidity. Once the claims in suit have beenidentified and once the “final decision has beenentered . . .,” the statute then prohibits the Officefrom maintaining an inter partes reexamination “of any such patent claim” (i.e., the patent claim in suit),“on the basis of issues which . . . [the requester]raised or could have raised” in the litigation(emphasis added). Accordingly, the phrase “raisedor could have raised” applies only to patent claimsthat were in suit and for which a final decision onnon-invalidity has been entered. Thus, the issue isnot whether the requester “could have raised” claimsthat were not in suit. Rather, once the claims thatwere actually before the court with respect to theissue of non-invalidity at the time of the court’sdecision are determined, the issue is whether anyissues raised in the reexamination proceeding withrespect to those claims either were raised or couldhave been raised by the requester in the litigation.

Evidence showing which claims were before thecourt may include a copy of the jury verdict form,or any other court document which shows whichclaims were before the court at the time of the court’sdecision. Also, where appropriate, a copy of thecourt’s docket may provide evidence, in combinationwith another court document such as a complaintand/or defendant’s answer, of which claims werebefore the court at the time of the court’s decision,by showing that the specific patent claims before thecourt at the time of the complaint and defendant’s

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answer have not been reduced or modified prior tothe court’s decision.

Regarding item no. 4 above, the petitioner mustsufficiently show that the issue(s) raised in thereexamination proceeding are the same issue(s) thatwere raised or could have been raised by therequester in the civil action. The last sentence ofpre-AIA 35 U.S.C. 317(b) permits “the assertion ofinvalidity [by the requester] based on newlydiscovered prior art unavailable to the third partyrequester”. See the legislative history of pre-AIA 35U.S.C. 317(b), which provides the meaning of theword “unavailable”, as it appears in the statute(emphasis added in bold):

Further, if a third-party requester asserts patentinvalidity in a civil action and a final decisionis entered that the party failed to prove theassertion of invalidity . . . after any appeals,that third-party requester cannot thereafterrequest inter partes reexamination on the basisof issues which were or which could have beenraised. However, the third-party requester mayassert invalidity based on newly discoveredprior art unavailable at the time of the civilaction or inter partes reexamination. Priorart was unavailable at the time if it was notknown to the individuals who were involvedin the civil action or inter partesreexamination proceeding on behalf of thethird-party requester and the USPTO.

106 Cong. Rec. S14720, Nov. 17, 1999. See also106 Cong. Rec. H11805, Nov. 9, 1999.

Thus, to show that a reference is “available”, thepatent owner must provide sufficient evidence thatthe reference was known to the requester (i.e., actualknowledge) at a time when it could have been raisedin the civil action; such as, e.g., prior to any trial.

The petitioner may provide, for example, adiscussion or comparison of the prior art raised inthe reexamination proceeding and any prior artactually raised at trial. Any argument that the priorart was raised at trial must be accompanied byevidence such as, for example, a court documentthat lists the prior art raised, such as a copy of a jury

verdict form. The petitioner may also provideevidence that the prior art raised in the reexaminationproceeding could have been raised by the requesterin the civil action by filing, for example, a copy ofdefendant’s invalidity contentions, which lists theprior art known to the requester before any trialbegan, and by comparing the prior art listed with theprior art raised in the reexamination proceeding.

B. Suspension Pending Potential Termination Due toLitigation

Pre-AIA 35 U.S.C. 314(c) states:

“Unless otherwise provided by the Directorfor good cause, all inter partes reexaminationproceedings under this section, including anyappeal to the Board of Patent Appeals andInterferences, shall be conducted with specialdispatch within the Office.” [Emphasis added]

The statute thus authorizes the Director of theUSPTO to suspend (stay) reexaminationproceedings, where there is good cause to do so,pending the conclusion of litigation based on apotential for termination of a reexaminationprosecution under pre-AIA 35 U.S.C. 317(b). Thus,a district court decision that is pending appeal onthe validity of the same claims considered in an interpartes reexamination proceeding, where therequester of the reexamination proceeding (or itsprivies) is also a party to the litigation, may providethe requisite statutory “good cause” for suspension,due to the possibility that the pre-AIA 35 U.S.C.317(b) estoppel may attach in the near future tobar/terminate the reexamination proceeding. Anysuch fact situation is resolved on a case-by-casebasis.

Congress, in creating the inter partes reexaminationstatutory framework in 2002, borrowed heavily fromthe existing ex parte reexamination regime. Forexample, inter partes reexamination proceedings,like ex parte reexaminations, must be conductedwith “special dispatch.” Pre-AIA 35 U.S.C. 314(c).Unlike ex parte reexamination, however, Congressprovided the Office with the statutory authority anddiscretion to suspend inter partes reexaminationproceedings for “good cause.” See pre-AIA 35U.S.C. 314(c).

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A grant of a petition to suspend an inter partesreexamination proceeding pending potentialtermination due to litigation is extremely rare, dueto the difficulty in determining the probability thatthe district court will, or will not, be reversed onappeal, or when the litigation might finally beconcluded, after all appeals. Because the Office isrequired to conduct reexamination proceedings withspecial dispatch, inter partes reexaminationproceedings are rarely suspended solely becausethere is a potential for termination due to pendinglitigation.

When determining whether there is "good cause" tosuspend action in the reexamination based onpending litigation, the Office may consider thefollowing elements:

1. The third party requester is a party to thelitigation.

2. The claims at issue in the litigation areidentical to the claims under reexamination. Thepre-AIA 35 U.S.C. 317(b) estoppel applies only topatent claims that were litigated in the suit, i.e.,claims that were before the court at the time of thecourt's decision (the litigated claims). If a claimunder reexamination is not the subject of thelitigation, then the estoppel provisions of pre-AIA35 U.S.C. 317(b) would not apply to the finaloutcome of the litigation as to that patent claim.Indeed, there would be no “final decision that theparty has not sustained its burden of proving theinvalidity” of that patent claim. Thus, there is no“potential for termination” of this reexaminationproceeding as to the non-litigated claims.

3. The issue(s) raised in the reexaminationproceeding are the same issue(s) that were raised orcould have been raised by the requester in thelitigation. The pre-AIA 35 U.S.C. 317(b) estoppelapplies only to issues which the requester or itsprivies raised or could have raised in the civil action.The estoppel does not apply where new issues areraised in the request, or raised in the reexaminationproceeding at a time when the new issues could alsohave been raised in the litigation.

If new art is raised in the reexamination proceedingand was not raised in the litigation (civil action), andthe art could not have been raised in the litigation,then estoppel does not attach. The patent owner has

the burden of showing that the art applied in therequest or later raised in the reexaminationproceeding was available, i.e., known, to thethird-party requester at a time when they could havebeen placed in the litigation, such as, e.g., prior totrial. See subsection V.A. above.

4. The litigation has advanced to a late enoughstage that there is a sufficient probability that a finaldecision will be adverse to the requester. Thepre-AIA 35 U.S.C. 317(b) estoppel applies only ina situation where a final decision adverse to therequester has already been issued. If there remainsany time for an appeal, or a request forreconsideration, from a court (e.g., district court orFederal Circuit) decision, or such action has alreadybeen taken, then the decision is not final, and theestoppel does not attach.

5. There is a concurrent ex parte reexaminationproceeding for the patent. As stated in MPEP § 2286:“The issuance of a final federal court decisionupholding validity during an ex parte reexaminationalso will have no binding effect on the examinationof the reexamination. This is because the court statesin Ethicon v. Quigg, 849 F.2d 1422, 1428, 7USPQ2d 1152, 1157 (Fed. Cir. 1988) that the Officeis not bound by a court’s holding of patent validityand should continue the reexamination.” If there isa concurrent ex parte reexamination proceedinghaving overlapping issues with an inter partesreexamination proceeding where the estoppel hasthe potential to attach, but no final decision has beenissued, then the Office may in some instances(depending on the individual facts andcircumstances), go forward with statutorily required“special dispatch” as per Ethicon in a mergedproceeding containing both the inter partesreexamination and the ex parte reexamination. Thisis a matter of administrative convenience to avoidrework and make the process more efficient. Again,OPLA should be consulted.

C. Examples of Where this Estoppel Was Addressedby the Office

In reexamination control numbers 95/000,093 and95/000,094 (the ‘093 and ‘094 proceedings), actionwas suspended based on ongoing litigation. After adistrict court decision adverse to requester, it wasdetermined that “good cause” existed to wait for theoutcome of the Federal Circuit appeal, because the

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reexamination proceedings were only at theirbeginning stages, while the concurrent litigation waspotentially near its final resolution. Requester hadchosen to permit the district court litigation toproceed for three years before filing its requests forreexamination, the filing taking place only afterjudgment was entered in patent owner’s favor in thelitigation. Had requester filed its requests forreexamination earlier, the reexamination proceedingswould have been much farther along in the process,and may likely have been completed at the Officebefore the district court issued its decision.Moreover, had requester filed its reexaminationrequests earlier in the litigation, the district courtmight have stayed the litigation to await the Office’sdecisions in the two reexamination proceedings.After choosing to go years through the entire districtcourt litigation proceeding without asking for theOffice’s input, requester was not in a position tocomplain that a suspension of the ‘093 and ‘094reexamination proceedings would deprive requesterof a chance to obtain the Office’s decision, whenthere was a strong possibility that the FederalCircuit’s decision would estop the Office fromissuing any decision at all. In short, requester couldnot have it both ways. Requester waited three yearsafter the district court case began, and waited untilafter the district court issued a final decision, suchthat its district court litigation could in no way beaffected by any decision on its reexaminationrequests. Requester’s delay was the reason that the‘093 and ‘094 reexaminations could very well bemooted before any reexamination decision issuedand the USPTO Director found “good cause” tosuspend the proceedings. On May 22, 2006, the U.S.District Court, Eastern District of Virginia, in SonyComputer Entertainment America Inc. v. Dudas, 85USPQ2d 1594 (E.D. Va 2006), issued a decisionupholding the Office’s finding of “good cause” tosuspend the ‘093 and ‘094 inter partesreexamination proceedings. Requester chose its route(litigation) and had to deal with the consequencesof its decision, i.e., a suspension of the reexaminationproceedings.

On the other hand, see reexamination controlnumbers 95/000,020, 95/000,071 and 95/000,072,for decisions in which action was not suspended,because the specific facts dictated otherwise.

VI. LITIGATION REVIEW AND CRU APPROVAL

In order to ensure that the Office is aware of prioror concurrent litigation, the examiner is responsiblefor conducting a reasonable investigation forevidence as to whether the patent for whichreexamination is requested has been, or is, involvedin litigation. The investigation will include a reviewof the reexamination file, the patent file, and theresults of the litigation computer search.

2686.05 Reexamination and Inter PartesReview Proceedings, Post-Grant Review, andCovered Business Method Patent Review[R-07.2015]

The Leahy-Smith America Invents Act amended 35U.S.C. 315(d) and added 35 U.S.C. 325(d) to providethat, during the pendency of an inter partes review,post grant review or covered business method review(“PTAB Review Proceeding”), if another proceeding(e.g., a reexamination proceeding) or matterinvolving the patent is before the Office, the Directormay determine the manner in which the PTABReview Proceeding and the other proceeding ormatter may proceed. Accordingly, if an examinerbecomes aware of a PTAB Review Proceeding forthe same patent that is being reexamined, thereexamination proceeding must be referred to theexaminer’s SPRS who will coordinate with thePTAB before taking any action on the reexaminationproceeding.

2687 Notice of Intent to Issue Inter PartesReexamination Certificate (NIRC) andConclusion of Reexamination Proceeding[R-07.2015]

Upon conclusion of the inter partes reexaminationproceeding, the examiner must complete a Noticeof Intent to Issue Inter Partes ReexaminationCertificate (NIRC) by filling out Form PTOL-2068.If appropriate, an examiner’s amendment will alsobe prepared. Where the claims are found patentable,reasons must be given for each claim foundpatentable. See the discussion as to preparation ofan examiner’s amendment and reasons for allowancefound at the end of this section. In addition, theexaminer must prepare the reexamination file so that

2600-166Rev. 10.2019, June 2020


the Office of Data Management can prepare andissue a certificate in accordance with 35 U.S.C. 316and 37 CFR 1.997 and setting forth the results of thereexamination proceeding and the content of thepatent following the proceeding. See MPEP § 2688.

I. INSTANCES WHERE A NIRC WOULD BEAPPROPRIATE

The following are the only instances when issuanceof a NIRC action would be proper in an inter partesreexamination proceeding:

(A) There is no timely response by the patentowner to an Office action requiring a response. Ifall claims are under rejection, the examiner will issuea Notice of Intent to Issue Inter PartesReexamination Certificate (NIRC). All claims willbe canceled by formal examiner’s amendment.

(B) After a Right of Appeal Notice (RAN) whereno party to the reexamination timely files a noticeof appeal.

(C) After filing of a notice of appeal, where allparties who filed a notice of appeal or notice of crossappeal fail to timely file an appellant brief (or failto timely complete the brief, where the appellantbrief is noted by the examiner as being incomplete).

(D) After a final decision by the Board, wherethere is no further timely appeal to the U.S. Courtof Appeals for the Federal Circuit nor is there atimely request for rehearing by the Board.

(E) After the federal court appeal process hasbeen completed and the case is returned to theexaminer.

II. PREPARATION OF THE NIRC ACTION

A. No Allowed Claims

Where all claims are rejected or objected to in theprior Office action, the examiner will issue a NIRCindicating that all claims have been canceled andterminating the prosecution. The cover sheet to beused is Notice of Intent to Issue ReexaminationCertificate Form PTOL-2068. As an attachment tothe NIRC cover sheet, the examiner will draft anexaminer’s amendment canceling all live claims inthe reexamination proceeding. Check the appropriatebox on PTOL-2068. In the remarks of the examiner’s

amendment, the examiner should point out why theclaims have been canceled. Since all claims are beingcanceled in the proceeding, no reasons forpatentability are attached. No panel reviewconference is needed in this instance, as the issuanceof the NIRC is essentially ministerial.

B. At Least One Allowed Claim

If at least one claim is free of rejection and objection,the examiner will issue a NIRC, in which allpatentable claims and canceled claims will beidentified. All rejected or objected claims will becanceled by formal examiner’s amendment (attachedas part of the NIRC). Check the appropriate box onForm PTOL-2068. In the remarks section of theexaminer’s amendment, the examiner should pointout why the claims have been canceled. As to thepatentable claims, reasons for patentability must beprovided for all such claims. After the examiner hasdetermined that the reexamination proceeding isready for the NIRC, the examiner will formulate adraft preliminary NIRC with attachments as needed.The examiner will then inform his/her CentralReexamination Unit (CRU) Supervisory PatentReexamination Specialist (SPRS) or TechnologyCenter (TC) Quality Assurance Specialist (QAS) ofhis/her intent to issue the NIRC. A panel reviewconference will be convened, and the conferencemembers will review the patentability of theremaining patentable claim(s) pursuant to MPEP§ 2671.03. If the conference confirms the examiner’spreliminary decision, the proposed NIRC shall beissued and signed by the examiner, with the two ormore other conferees initialing the action (as“conferee”) to indicate their presence in theconference. If the conference does not confirm theexaminer’s decision (e.g., it is determined that oneor more of the remaining claims should be rejected),then the examiner will reevaluate and issue anappropriate Office action. A panel review conferenceis not to be held as to any claim that was in the case(proceeding) at the time the case was reviewed bythe Board or a federal court.

III. EXAMINER’S AMENDMENT TO PLACEPROCEEDING IN CONDITION FOR NOTICE OF

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INTENT TO ISSUE INTER PARTESREEXAMINATION CERTIFICATE

Interviews are not permitted in an inter partesreexamination proceeding (see MPEP § 2685). Thus,the examiner is not permitted to telephone the patentowner to obtain authorization to make anamendment. Accordingly, the only times that anexaminer’s amendment can be made in conjunctionwith a NIRC are where the patent ownerauthorization need not be obtained. Suchamendments include:

(A) An examiner’s amendment to deal withformal matters such as grammar, incorrect spelling,or incorrect number; i.e., matters that do not involvea rejection, do not go to the merits, and do notrequire the examiner to obtain approval.

(B) An examiner’s amendment to change thetitle.

(C) An examiner’s amendment to cancel allrejected and objected claims in the proceeding, whenthe patent owner fails (1) to timely respond (wherea response is required), (2) to timely appeal, or (3)to take further action to maintain an appeal.

(D) If a patent expires during the pendency of areexamination proceeding for that patent, allamendments to the patent claims and all claimsadded during the proceeding must be withdrawn.The examiner’s amendment is to include a statementsuch as:

“As the patent being reexamined has expired duringthe pendency of the present reexaminationproceeding, all amendments made during theproceeding are improper, and are hereby expresslywithdrawn.”

If it has not previously been done in the proceeding,a diagonal line should be drawn across a copy of allamended and new claims (and text added to thespecification) residing in the amendment papers, andscanned into the Image File Wrapper (IFW).

See also MPEP § 1302.04 et. seq. as to examiner’samendments not needing authorization by anapplicant or a patent owner. Note, however, that inan inter partes reexamination proceeding (asopposed to an application) all such examiner’samendments must be made by formal examiner’s

amendment accompanying the NIRC, in order toprovide notice of the changes made in the patentbeing reexamined to both the patent owner and thethird party requester.

Note that any change going to the merits of the case(i.e., more than a formal matter) could not be madeby examiner’s amendment accompanying the NIRC.Rather, a change going to the merits would require(1) reopening of prosecution with the approval ofthe CRU Director, (2) an Office action suggestingthe change to patent owner, (3) a formal amendmentsubmitted by the patent owner, and (4) anopportunity for the third party requester to commenton the patent owner’s submission.

Where an examiner’s amendment is to be prepared,Box 9 of Form PTOL-2068 (Notice of Intent to Issuea Reexamination Certificate) is checked, and formparagraph 26.69 is used to provide the appropriateattachment:

¶ 26.69 Examiner’s Amendment Accompanying Notice ofIntent to Issue Reexamination Certificate

An examiner’s amendment to the record appears below. Thechanges made by this examiner’s amendment will be reflectedin the reexamination certificate to issue in due course.

[1]

The examiner’s amendment must comply with therequirements of 37 CFR 1.530(d)-(j) in amendingthe patent.

Thus, if a portion of the text is amended more thanonce, the examiner’s amendment should indicate allchanges (insertions and deletions) in relation to thecurrent text in the patent under reexamination, notin relation to a prior amendment made during theproceeding.

In addition, the examiner’s amendment requirespresentation of the full text of any paragraph orclaim to be changed, with 37 CFR 1.530(f) markings.Examiners’ amendments in reexamination are notsubject to the exceptions to this requirement whichare provided for applications in 37 CFR 1.121(g)and which do not apply to reexaminationproceedings. See MPEP § 2250. The only exceptionto the full text presentation requirement is that anentire claim or an entire paragraph of specification

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may be deleted from the patent by a statementdeleting the claim or paragraph without thepresentation of the text of the claim or paragraph.

IV. REASONS FOR PATENTABILITY AND/ORCONFIRMATION

Reasons for patentability must be provided, unlessall claims are canceled in the proceeding. Check theappropriate box on Form PTOL-2068 and providethe reasons as an attachment. In the attachment tothe NIRC, the examiner should indicate why theclaims found patentable in the reexaminationproceeding are clearly patentable over the citedpatents or printed publications. This is done in amanner similar to that used to indicate reasons forallowance in an application. See MPEP § 1302.14.Where the record is clear as to why a claim ispatentable (which should be the usual situation, inview of the inter partes nature of the proceeding),the examiner may simply refer to the particularportions of the record which clearly establish thepatentability of that claim. In any event, reasonsfor patentability must be provided for every claimidentified as patentable in the NIRC, and thepatent owner must be notified in the NIRC thatit has an opportunity to provide comments on thestatement of the reasons for patentability.

The reasons for patentability may be set forth onForm PTOL-476, entitled “REASONS FORPATENTABILITY AND/OR CONFIRMATION.”However, as a preferred alternative to using FormPTOL-476, the examiner may instead use formparagraph 26.70.

¶ 26.70 Reasons for Patentability and/or Confirmation inInter Partes Reexamination

STATEMENT OF REASONS FOR PATENTABILITYAND/OR CONFIRMATION

The following is an examiner’s statement of reasons forpatentability and/or confirmation of the claims found patentablein this reexamination proceeding: [1]

Any comments considered necessary by the PATENT OWNERregarding the above statement must be submitted promptly toavoid processing delays. Such submission by the patent ownershould be labeled: “Comments on Statement of Reasons forPatentability and/or Confirmation” and will be placed in thereexamination file.

Examiner Note:

This form paragraph may be used as an attachment to the Noticeof Intent to Issue Inter Partes Reexamination Certificate,PTOL-2068 (item number 3).

Original patent claims that are found patentable ina reexamination proceeding are generally to bedesignated as “confirmed” claims, while new claimsand amended patent claims are generally to bedesignated as “patentable” claims. However, forpurposes of the examiner setting forth reasons forpatentability or confirmation, the examiner may use“patentable” to refer to any claim that defines overthe cited patents or printed publications. There is noneed to separate the claims into “confirmed” and“patentable” categories when setting forth thereasons.

Where all claims are canceled in the proceeding, noreasons for patentability are provided.

V. PREPARATION OF THE CASE FORPUBLICATION

As to preparing the inter partes reexamination filefor publication of the certificate, see MPEP § 2287for guidance. The preparation of an inter partesreexamination proceeding for publication is carriedout in the same manner that an ex partereexamination proceeding is prepared forpublication.

The examiner must complete the examinerpreparation of the case for reexamination certificateby completing an Examiner Checklist Reexaminationform, PTOL-1516. The Legal Instrument Examiner(LIE) must complete a Reexamination ClerkChecklist form, PTOL-1517. The case is reviewedby the CRU SPRS/TC QAS.

After the reexamination file and its contents arereviewed, the NIRC will be mailed, and appropriatePALM work and update scanning will be carriedout. The reexamination proceeding will then beforwarded, to the Office of Data Management forprinting.

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VI. REEXAMINATION REMINDERS

The following items deserve special attention. Theexaminer should ensure they have been correctlycompleted or followed before forwarding forprocessing of the NIRC.

(A) All patent claims for which a substantialnew question of patentability or reasonablelikelihood of prevailing had been found must havebeen examined. See MPEP § 2643.

(B) No renumbering of patent claims ispermitted. New claims may require renumbering.See MPEP §§ 2666.01 and 2250.

(C) Amendments to the description and claimsmust conform to requirements of 37 CFR1.530(d)-(k). This includes any changes made byexaminer’s amendment. If a portion of the text isamended more than once, each amendment shouldindicate all of the changes (insertions and deletions)in relation to the current text in the patent underreexamination. See MPEP §§ 2666.01 and 2250.

(D) The prior art must be listed on a formPTO-892, PTO-1449, PTO/SB/08A or 08B, orPTO/SB/42 (or on a form having format equivalentto one of these forms). These forms must be properlycompleted. See MPEP § 2657.

(E) The examiner and clerk checklists PTO-1516and PTO-1517 must be entirely and properlycompleted. A careful reading of the instructionscontained in these checklists is essential. The clerkchecklist is designed as a check and review of theexaminer’s responses on the examiner checklist.Accordingly, the clerk should personally review thefile before completing an item. The clerk shouldcheck to make certain that the responses to all relateditems on both checklists are in agreement.

(F) Multiple copending reexaminationproceedings are often merged. See MPEP § 2686.01.

(G) Where the reexamination proceeding iscopending with an application for reissue of thepatent being reexamined, the files must have beenforwarded to the Office of Patent LegalAdministration (OPLA) for a consideration ofpotential merger, with a decision on the questionbeing present in the reexamination file. See MPEP§ 2686.03.

(H) Reasons for patentability and/orconfirmation are required for each claim foundpatentable.

(I) There is no issue fee in reexamination. SeeMPEP § 2634.

(J) The patent claims may not be amended nornew claims added after expiration of the patent. SeeMPEP §§ 2666.01 and 2250.

(K) Original drawings cannot be physicallychanged. "Amended" or "New" figures must beappropriately labeled as such and presented on newsheets in compliance with 37 CFR 1.84. See 37 CFR1.530(d)(3) and MPEP § 2666.02.

(L) An amended or new claim may not enlargethe scope of the patent claims. See MPEP §§ 2658,2666.01, and 2250.

(M) If the patent has expired, all amendmentsto the patent claims and all claims added during theproceeding must be withdrawn. Further, all presentlyrejected and objected claims are canceled byexaminer’s amendment. See MPEP § 2250,subsection on “Amendment After the Patent HasExpired.”

A. Handling of Multiple Dependent Claims

For treatment of multiple dependent claims whenpreparing a reexamination proceeding for publicationof the reexamination certificate, see the discussionin MPEP § 2287.

B. The Title of the Patent

Normally, the title will not need to be changedduring reexamination. If a change of the title isnecessary, it should have been pointed out as earlyas possible in the prosecution, as a part of an OfficeAction. An informal examiner’s amendment (i.e.,changing the title and merely initialing the change)is not permitted in reexamination.

VII. REEXAMINATION PROCEEDINGS INWHICH ALL THE CLAIMS ARE CANCELED

There will be instances where all claims in thereexamination proceeding are to be canceled. Thiswould occur where the patent owner fails to timelyrespond to an Office action that requires a response,and all live claims in the reexamination proceeding

2600-170Rev. 10.2019, June 2020


are under rejection. This would also occur where alllive claims in the reexamination proceeding are tobe canceled as a result of a decision of the Boardaffirming the examiner, and the time for appeal tothe court and for requesting rehearing has expired.In these instances the examiner will issue a NIRCindicating that all claims have been canceled andterminating the prosecution. As an attachment to theNIRC, the examiner will draft an examiner’samendment canceling all live claims in thereexamination proceeding. In the examiner’samendment, the examiner should point out why theclaims have been canceled. For example, theexaminer might state one of the two followingexamples, as is appropriate:

“Claims 1-8 (all live claims in the proceeding)were subject to rejection in the last Officeaction mailed 9/9/99. Patent owner failed totimely respond to that Office action.Accordingly, claims 1-8 have been canceled.See 37 CFR 1.957(b) and MPEP § 2666.10.”

“The rejection of claims 1-8 (all live claims inthe proceeding) has been affirmed in the Boarddecision of 9/9/99, and no timely appeal to thecourt has been filed. Accordingly claims 1-8have been canceled.”

In order to physically cancel the live claims in thereexamination file history, brackets should be placedaround all the live claims on a copy of the claimsprinted from the file history, and the copy thenscanned into the file history. All other claims in theproceeding should have previously been eitherreplaced or canceled.

The examiner will designate a canceled originalpatent claim, to be printed in the Official Gazette,on the Issue Classification IFW form in theappropriate place for the claim chosen.

A panel review conference is not to be held becausethe proceeding is to be concluded by the cancellationof all claims.

2687.01 Examiner Consideration ofSubmissions After NIRC [R-07.2015]

The rules do not provide for an amendment to befiled in an inter partes reexamination proceedingafter a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) has been issued.Note that 37 CFR 1.312 does not apply inreexamination. Any amendment, informationdisclosure statement, or other paper related to themerits of the reexamination proceeding filed afterthe NIRC (except as indicated immediately below)must be accompanied by a petition under 37 CFR1.182. The petition must be granted, in order to havethe amendment, information disclosure statement,or other paper related to the merits considered.Where an amendment, information disclosurestatement, or other paper related to the merits of thereexamination proceeding is filed after the NIRC,and the accompanying petition under 37 CFR 1.182is granted, the examiner will reconsider the case inview of the new information, and if appropriate, willreopen prosecution. See MPEP § 2656 for a detaileddiscussion of the criteria for obtaining entry andconsideration of information disclosure statementfiled after the NIRC.

Interviews are not permitted in an inter partesreexamination proceeding (see MPEP § 2685). Thus,the examiner is not permitted to telephone the patentowner and obtain authorization to make anamendment. The only time an examiner’samendment can be made in an inter partesreexamination after the NIRC has been issued iswhere an examiner’s amendment is needed toaddress matters that do not require the patent owner’sapproval. However, matters that do not require thepatent owner’s approval are generally minor formalmatters. Thus, it would be rare for an examiner toneed to withdraw the issued NIRC for issuance of anew NIRC with an examiner’s amendment, sincewithdrawal of the NIRC should not be done forminor formal matters. In view of this, any examiner’samendment in an inter partes reexaminationproceeding to be made after a NIRC (has beenissued) requires the Central Reexamination Unit(CRU) Supervisory Patent Reexamination Specialist(SPRS) or Technology Center (TC) QualityAssurance Specialist (QAS) to approve theexaminer’s amendment.

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Any “Comments on Statement of Reasons forPatentability and/or Confirmation” which arereceived will be placed in the reexamination file,without comment. This will be done even where thereexamination certificate has already issued.

2688 Issuance of Inter Partes ReexaminationCertificate [R-07.2015]

35 U.S.C. 316 Certificate of patentability, unpatentabilityand claim cancellation.

(a) IN GENERAL.— In an inter partes reexaminationproceeding under this chapter, when the time for appeal hasexpired or any appeal proceeding has terminated, the Directorshall issue and publish a certificate canceling any claim of thepatent finally determined to be unpatentable, confirming anyclaim of the patent determined to be patentable, andincorporating in the patent any proposed amended or new claimdetermined to be patentable.

*****

37 CFR 1.997 Issuance and publication of inter partesreexamination certificate concludes inter partesreexamination proceeding.

(a) To conclude an inter partes reexamination proceeding,the Director will issue and publish an inter partes reexaminationcertificate in accordance with 35 U.S.C. 316 setting forth theresults of the inter partes reexamination proceeding and thecontent of the patent following the inter partes reexaminationproceeding.

(b) A certificate will be issued and published in each patentin which an inter partes reexamination proceeding has beenordered under § 1.931. Any statutory disclaimer filed by thepatent owner will be made part of the certificate.

(c) The certificate will be sent to the patent owner at theaddress as provided for in § 1.33(c). A copy of the certificatewill also be sent to the third party requester of the inter partesreexamination proceeding.

(d) If a certificate has been issued and published whichcancels all of the claims of the patent, no further Officeproceedings will be conducted with that patent or any reissueapplications or any reexamination requests relating thereto.

(e) If the inter partes reexamination proceeding isterminated by the grant of a reissued patent as provided in §1.991, the reissued patent will constitute the reexaminationcertificate required by this section and 35 U.S.C. 316.

(f) A notice of the issuance of each certificate under thissection will be published in the Official Gazette.

Since abandonment is not possible in areexamination proceeding, an inter partes reexamination certificate will be issued at theconclusion of the proceeding for each patent inwhich a reexamination proceeding has been orderedunder 37 CFR 1.931, except where the reexamination

has been concluded by vacating the reexaminationproceeding, or by the grant of a reissue patent on thesame patent in which case the reissue patent alsoserves as the reexamination certificate.

The inter partes reexamination certificate will setforth the results of the proceeding and the contentof the patent following the reexaminationproceeding. The certificate will:

(A) cancel any patent claims determined to beunpatentable;

(B) confirm any patent claims determined to bepatentable;

(C) incorporate into the patent any amended ornew claims determined to be patentable;

(D) make any changes in the descriptionapproved during reexamination;

(E) include any statutory disclaimer or terminaldisclaimer filed by the patent owner;

(F) identify unamended claims which were heldinvalid on final holding by another forum on anygrounds (e.g., by checking Box 9 “Other” on formPTOL-2068 and describing the status and Box 16“Other” on the examiner’s checklist formPTO-1516);

(G) identify any patent claims not reexamined;

(H) be mailed on the day of its date to the patentowner at the address provided for in 37 CFR 1.33(c),and a copy will be mailed to the requester; and

(I) refer to patent claims, dependent on amendedclaims, determined to be patentable.

If a certificate issues which cancels all of the claimsof the patent, no further Office proceedings will beconducted with regard to that patent or any reissueapplication or reexamination request directed thereto.However, in an extremely rare situation in which areissue application is copending with areexamination proceeding in which a reexaminationcertificate subsequently issues cancelling all claimsof the patent, the patent owner may file a petitionunder 37 CFR 1.183 requesting waiver of theprovisions of 37 CFR 1.997(d), to address claimsthat were pending in the reissue application prior tothe issuance of the certificate. Any such petitionmust be accompanied by a paper cancelling anyclaim within the scope of the claims canceled by the

2600-172Rev. 10.2019, June 2020


certificate and pointing out why the claims remainingin the reissue application can be patentable, despitethe cancellation of all the patent claims by certificate,i.e., why the remaining claims are patentable overthe cancelled claims. Such a paper will be availableto the examiner, should the petition be granted.

If a reexamination proceeding is concluded by thegrant of a reissue patent as provided for in 37 CFR1.991, the reissue patent will constitute thereexamination certificate required by 35 U.S.C. 316.

If all of the claims are disclaimed in a patent underreexamination, a certificate under 37 CFR 1.997 willbe issued indicating that fact.

A notice of the issuance of each reexaminationcertificate will be published in the Official Gazetteon its date of issuance in a format similar to that usedfor reissue patents. See MPEP § 2691.

2689 Reexamination Review [R-11.2013]

After a reexamination case is acted on by theexaminer and all premailing clerical processing iscompleted, the case is forwarded to the CentralReexamination Unit (CRU) Supervisory PatentReexamination Specialist (SPRS) or TechnologyCenter (TC) Quality Assurance Specialist (QAS).The CRU SPRS/TC QAS (with the aid of theparalegals or other technical support who might beassigned as backup) will then (A) procedurallyreview the examiner’s action for compliance withthe applicable provisions of the reexamination statuteand regulations, and with reexamination policy,practice and procedure, (B) do a completenessreview of the action to ensure that all issues andarguments raised by all parties are appropriatelydeveloped, considered and addressed, and that allmaterials of the action (e.g., references, forms andcover sheets) are present and appropriatelycompleted.

In addition to the CRU SPRS/TC QAS review ofthe reexamination cases, a panel review is made priorto issuing Office actions as set forth in MPEP §2671.03.

2690 Format of Inter Partes ReexaminationCertificate [R-07.2015]

An inter partes reexamination certificate is issuedat the close of each inter partes reexaminationproceeding in which reexamination has been orderedunder 37 CFR 1.931, unless the inter partes reexamination proceeding is merged with a reissueapplication pursuant to 37 CFR 1.991. In thatsituation, the inter partes reexamination proceedingis concluded by the grant of a reissue patent, thereissue patent will constitute the reexaminationcertificate. It should be noted that where an ex partereexamination is merged with an inter partesreexamination proceeding, an inter partesreexamination certificate will issue for the mergedproceeding.

The inter partes reexamination certificate isformatted much the same as the title page of currentU.S. patents.

The certificate is titled “ INTER PARTESREEXAMINATION CERTIFICATE.” The title isfollowed by an “ordinal” number in parentheses,

such as “(5th)”, which indicates that it is the fifth inter partes reexamination certificate that has issued.The inter partes reexamination certificates will benumbered in a separate and new ordinal sequence,

beginning with “(1st)”. The ex parte reexaminationcertificates will continue the ordinal numberingsequence that has already been established for exparte reexamination certificates.

The certificate number will always be the patentnumber of the original patent followed by atwo-character “kind code” suffix. The “kind code”suffix is C1 for a first reexamination certificate, C2for a second reexamination certificate for the samepatent, etc.

For example, “1” is provided in the certificate forthe first reexamination certificate and “2” for thesecond reexamination certificate. Thus, a secondreexamination certificate for the same patent wouldbe designated as “C2” preceded by the patentnumber. The next higher number will be given tothe reexamination proceeding for which thereexamination certificate is issued, regardless of

Rev. 10.2019, June 20202600-173


whether the proceeding is an ex parte reexaminationor an inter partes reexamination proceeding.

Note that “B1” ex parte reexamination certificatesthat were issued prior to January 1, 2001, includedthe patent number of the original patent followed bythe letter “B.” Where the first reexaminationcertificate was a “B1” certificate and an inter partesreexamination certificate then issues, the inter partesreexamination certificate will be designated “C2”and NOT “C1.” Thus, by looking at the numberfollowing the “C,” one will be able to ascertain thenumber of reexamination certificates that precededthe certificate being viewed, i.e., how many priorreexamination certificates have been issued for thepatent. (If this were not the practice and C1 wereused, one would not be able to ascertain from thenumber on the certificate how many B certificatescame before.)

The certificate denotes the date the certificate wasissued at INID code [45] (see MPEP § 901.04). Thetitle, name of inventor, current classification, theabstract, and the notice regarding the list of prior artdocuments appear at their respective INID codedesignations, much the same as is presently done inutility patents.

The primary differences, other than as indicatedabove, are:

(A) The filing date and number of the request ispreceded by “Reexamination Request;”

(B) The patent for which the certificate is nowissued is identified under the heading“Reexamination Certificate for”; and

(C) A notice will be present which will informthat the list of cited prior art documents will beavailable via PAIR by reexamination control number.

Finally, the certificate will identify the patent claimswhich were confirmed as patentable, canceled,disclaimed, and those claims not examined. Onlythe status of the confirmed, canceled, disclaimed,and not examined claims will be indicated in thecertificate. The text of the new and amended claimswill be printed in the certificate. Any new claimswill be printed in the certificate completely in italics,and any amended claims will be printed in thecertificate with italics and bracketing indicating the

amendments thereto. Any prior court decisions willbe identified, as well as the citation of the courtdecisions.

2691 Notice of Inter Partes ReexaminationCertificate Issuance in Official Gazette[R-08.2012]

The Official Gazette notice will includebibliographic information, and an indication of thestatus of each claim after the conclusion of thereexamination proceeding. Additionally, arepresentative claim will be published along with anindication of any changes to the specification ordrawing.

The notice of reexamination certificate will clearlystate that it is a certificate for a concluded interpartes reexamination proceeding (as opposed to an ex parte reexamination proceeding).

2692 Distribution of Certificate [R-08.2012]

An e-copy of the inter partes reexaminationcertificate will be associated with the e-copy of thepatent in the search files. A copy of the certificatewill also be made a part of any patent copiesprepared by the Office subsequent to the issuanceof the certificate.

A copy of the inter partes reexamination certificatewill also be forwarded to all depository libraries andto those foreign offices which have an exchangeagreement with the Office.

2693 Intervening Rights [R-08.2012]

35 U.S.C. 316 Certificate of patentability, unpatentabilityand claim cancellation.

*****

(b) AMENDED OR NEW CLAIM.— Any proposedamended or new claim determined to be patentable andincorporated into a patent following an inter partesreexamination proceeding shall have the same effect as thatspecified in section 252 of this title for reissued patents on theright of any person who made, purchased, or used within theUnited States, or imported into the United States, anythingpatented by such proposed amended or new claim, or who madesubstantial preparation therefor, prior to issuance of a certificateunder the provisions of subsection (a) of this section.

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The situation of intervening rights resulting from inter partes reexamination proceedings parallels theintervening rights situation resulting from reissuepatents or from ex parte reexamination proceedings.The rights detailed in 35 U.S.C. 252 for reissue applyequally in reexamination and reissue situations. See Fortel Corp. v. Phone-Mate, Inc., 825 F.2d 1577,3 USPQ2d 1771 (Fed. Cir. 1987); Kaufman Co.,Inc. v. Lantech, Inc., 807 F.2d 970, 1 USPQ2d 1202(Fed. Cir. 1986); Tennant Co. v. Hako Minuteman,Inc., 4 USPQ2d 1167 (N.D. Ill. 1987); and Key Mfg.Group, Inc. v. Microdot, Inc., 679 F.Supp. 648, 4USPQ2d 1687 (E.D. Mich. 1987).

2694 Concluded Reexamination Proceedings[R-07.2015]

Inter partes reexamination proceedings may beconcluded in one of three ways:

(A) The prosecution of the reexaminationproceeding may be brought to an end, and theproceeding itself concluded, by a denial ofreexamination, or vacating the reexaminationproceeding, or terminating the reexaminationproceeding. (In these instances, no reexaminationcertificate is issued).

(1) A reexamination file (IFW or paper) inwhich reexamination has been denied or vacatedshould be forwarded to the Central ReexaminationUnit (CRU) if the file is not already there. The CRUwill process the file to provide the partial refund setforth in 37 CFR 1.26(c). The reexamination file willthen be given an 820 status (reexamination denied)or an 822 status (reexamination vacated). A copy ofthe PALM “Application Number Information” screenand the “Contents” screen is printed, the printed copyis annotated by adding the comment“PROCEEDING CONCLUDED,” and the annotatedcopy is then scanned into IFW using themiscellaneous letter document code.

(2) A reexamination file (IFW or paper) inwhich reexamination has been terminated should beforwarded to the CRU if the file is not already there.The reexamination file will then be given an 820status (reexamination terminated). A copy of thePALM “Application Number Information” screenand the “Contents” screen is printed, the printed copyis annotated by adding the comment“PROCEEDING CONCLUDED,” and the annotated

copy is then scanned into IFW using themiscellaneous letter document code. A partial refundis not made in this instance, since the reexaminationwas properly commenced and addressed, and wasterminated later based upon a court decision, or thelike.

(B) The proceeding may be concluded under 37CFR 1.997(b) with the issuance of a reexaminationcertificate.

A reexamination proceeding that is to be concludedin this manner should be processed as set forth inMPEP § 2687 and then forwarded to the CRU forreview, mailing of the NIRC, and forwarding thefile to the Office of Data Management.

(C) The proceeding may be concluded under 37CFR 1.997(e) where the reexamination proceedinghas been merged with a reissue proceeding and areissue patent is granted; an individual reexaminationcertificate is not issued, but rather the reissue patentserves as the certificate.

A reexamination proceeding that is concluded in thismanner should be processed, together with thereissue proceeding, as set forth in MPEP § 1455 and§ 1456.

2695 Reexamination of a Reexamination[R-08.2012]

See MPEP § 2295 for guidance for the processingand examination of a reexamination request filed ona patent for which a reexamination certificate hasalready issued, or a reexamination certificate issueson a prior reexamination, while the newreexamination is pending. This reexaminationrequest is generally referred to as a “reexaminationof a reexamination.” A reexamination of areexamination is processed in accordance with theguidelines set forth in MPEP § 2295 regardless ofwhether the reexamination certificate was issued foran ex parte reexamination or an inter partesreexamination, and regardless of whether the pendingreexamination proceeding is an ex partereexamination or an inter partes reexamination.

Rev. 10.2019, June 20202600-175


2696 USPTO Forms To Be Used in InterPartes Reexamination [R-11.2013]

The correct forms which are to be used by the Officein inter partes reexamination actions and processingare as follows (these forms are not reproducedbelow):

PTOL-2064(A) OFFICE ACTION IN INTER PARTES REEXAMINATION......................................PTOL-2065(B) ACTION CLOSING PROSECUTION (37 CFR 1.949)...............................................PTOL-2066(C) RIGHT OF APPEAL NOTICE (37 CFR 1.953)..........................................................PTOL-2067(D) INTER PARTES REEXAMINATION NOTIFICATION

REAPPEAL.......................................................................................................................PTOL-2068(E) NOTICE OF INTENT TO ISSUE INTER PARTES REEXAMINATION

CERTIFICATE..................................................................................................................PTOL-476(F) REEXAMINATION REASONS FOR

PATENTABILITY/CONFIRMATION..............................................................................PTOL-2069(G) NOTICE OF DEFECTIVE PAPER IN INTER PARTES

REEXAMINATION..........................................................................................................PTOL-2070(H) TRANSMITTAL OF COMMUNICATION TO THIRD PARTY REQUESTER –

INTER PARTES REEXAMINATION...............................................................................PTOL-2071(I) INTER PARTES REEXAMINATION COMMUNICATION (WITH

SSP)...............................................................................................................PTOL-2072(J) INTER PARTES REEXAMINATION COMMUNICATION (NO

SSP).......................................................................................................................PTOL-2073(K) INTER PARTES REEXAMINATION NOTIFICATION RE BRIEF.....................PTOL-2291(L) INTER PARTES REEXAMINATION EXAMINER'S ANSWER......................PTOL-1516(M) EXAMINER CHECKLIST – REEXAMINATION..............................................PTOL-1517(N) REEXAMINATION CLERK CHECKLIST.........................................................

2600-176Rev. 10.2019, June 2020


mpep - chapter 2600 - optional inter partes reexamination · reexamination and inter partes review...

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