Editing MPEP 2200

{{MPEP Chapter|2100|2300}}

'''<big>Chapter 2200 Citation of Prior Art and Ex Parte Reexamination of Patents</big>'''

<div class="noautonum">__TOC__</div>

==2201 Introduction==

Statutory basis for citation of prior art patents or 
printed publications in patent files and reexamination 
of patents became available on July 1, 1981, as a 
result of new sections 301-307 of title 35 United 
States Code which were added by Public Law 96-517 
enacted on December 12, 1980. The rules of practice 
in patent cases relating to reexamination were initially 
promulgated on April 30, 1981, at 46 FR 24179-
24180 and on May 29, 1981, at 46 FR 29176-29187.

On November 29, 1999, Public Law 106-113 was 
enacted, and expanded reexamination by providing an 
“inter partes” option. Public Law 106-113 authorized 
the extension of reexamination proceedings via an 
optional inter partes reexamination procedure in addition 
to the present ex parte reexamination. 35 U.S.C. 
311 - 318 are directed to the optional inter partesreexamination procedures. The final rules to implement 
the optional inter partes reexamination were 
published in the Federal Register on December 7, 
2000 at 65 FR 76756 and in the Official Gazette on 
January 2, 2001 at 1242 OG 12.

See MPEP Chapter 2600 for guidance on the procedures 
for inter partes reexamination proceedings.

The reexamination statute was amended on 
November 2, 2002, by Public Law 107-273, 116 Stat. 
1758, 1899-1906 (2002) to expand the scope of what 
qualifies for a substantial new question of patentability 
upon which a reexamination may be based (see 
MPEP § 2242, POLICY IN SPECIFIC SITUATIONS, 
part A), and made technical corrections to the 
statute. See the 21st Century Department of Justice 
Appropriations Authorization Act, TITLE III- 
INTELLECTUAL PROPERTY, Subtitle A - Patent 
and Trademark Office, Section 13105, of the “Patent 
and Trademark Office Authorization Act of 2002” - 
Enacted as part of Public Law 107-273 on November 
2, 2002.

This chapter is intended to be primarily a guide for 
U.S. Patent and Trademark Office (Office) personnel 
on the processing of prior art citations and ex partereexamination requests, as well as handling ex partereexamination proceedings. Secondarily, it is to also 
serve as a guide on the formal requirements for filing 
such documents in the Office.

The flowcharts show the general provisions of both 
the citation of prior art and ex parte reexamination 
proceedings, including reference to the pertinent rule 
sections.




 



Ex Parte Reexamination - Procedure Prior To Appeal (Flowchart)
Ex Parte Reexamination -PROCEDURE PRIOR TO APPEAL(applicable rule section)
Examiner reopens 
Prosecution?
SubstantialNewQuestion?
(1.515(a))
Petition Filed 
Under 1.515(c)?
Patent owner 
responds to 
Office action ?
YesNo ResponseExaminer 
issues action. 
Is it a final 
rejection ?
YesNo ; reexam 
is deniedPat. Owner paper after final rejection (1.116)
YesPetition 
Denied 
Examiner considers the paper (1.116)
NoNo ResponseTo Final 
RejectionNotice of Intent to IssueReexamination CertificateYesNoPatent Owner files Notice of Appeal (41.31)
Examiner issues final rejection (1.113)
Patent Owner response after non-final action (1.111)
Examiner issues Office action (1.104)
Request for Reexamination filed (1.510)
Reexamination ordered (1.525)
Patent owner 
statement?
Requester 
reply ?
Pat. owner statement (1.530(b) & (c))
No Amendment 
After FinalNoAll Claims Found 
PatentableNoYesNoRequester petition to Director of the 
Office to review whether a substantial 
new question exists (1.515(c))
YesThird party requester reply (1.535)
Reexamination Is TerminatedPetition 
Granted 
YesNotice of requestPublished in O.G. (1.11(c))
Panel review conductedat each stageof examination, 
other than for non-meritsactions such as 
notices of informalityor incomplete response.
Appeal conference is 
panel review prior to 
Examiner’s AnswerNew examiner 
assigned





 

Flowchart Ex Parte Reexamination - Procedure From Time of AppealFlowchart Ex Parte Reexamination - Procedure From Time of Appeal
Examiner’s AnswerIssued?Where examiner 
changes position to add 
new ground of rejection; 
prosecution must be 
reopenedPatent Owner files Notice of Appeal (41.31)
Ex Parte Reexamination –PROCEDURE FROM TIME OF APPEAL(applicable rule section)
Patent Owner files Appeal Brief (41.37)
Appeal brief not filedNotice of Intent to IssueReexamination CertificateYes
NoAppeal ConferenceExaminer’s Answer (41.39(a))
Patent Owner files Reply Brief (41.41(a))
Go to flowchart(procedure prior to appeal):
on previous chartExr. Issues Action. 
Is it a final rejection?
Acknowledge Reply Brief (41.43(a)(1))
Office ActionReopeningProsecution(41.43(a)(1))
Board Decision 
(41.50)
Patent Ownerresponse under 
1.111 or 1.113.

Patent Ownerinitiates new appeal 
Patent Owner TakesFurther ActionExaminer affirmed at 
least in part; no new 
ground 
YesPatent Owner requestsrehearing (41.50(b)(2))
Patent Owner appeal to CAFC (1.301). 
For some reexaminations, option 
to file appeal As Civil action (1.303)
i.e., where the 
reexamination was filed 
prior to November 29, 1999Examiner reversedNotice of Intent to IssueReexamination CertificateNew ground of rejection (41.50(b))Patent Owneramendmentand/orShowing of factsSee 41.50(b)(1) 
41.50(b)(2)
GrantedDeniedPatent Owner TakesFurther ActionNoYesNoGo to “BoardDecision” 
Court Decision




==2202 Citation of Prior Art==

{{Statute|35 U.S.C. 301. Citation of prior art.}}
Any person at any time may cite to the Office in writing prior 
art consisting of patents or printed publications which that person 
believes to have a bearing on the patentability of any claim of a 
particular patent. If the person explains in writing the pertinency 
and manner of applying such prior art to at least one claim of the 
patent, the citation of such prior art and the explanation thereof 
will become a part of the official file of the patent. At the written 
request of the person citing the prior art, his or her identity will be 
excluded from the patent file and kept confidential.
|}

{{Statute|37 CFR 1.501. Citation of prior art in patent files.}}
(a)At any time during the period of enforceability of a 
patent, any person may cite, to the Office in writing, prior art consisting 
of patents or printed publications which that person states 
to be pertinent and applicable to the patent and believes to have a 
bearing on the patentability of any claim of the patent. If the citation 
is made by the patent owner, the explanation of pertinency 
and applicability may include an explanation of how the claims 
differ from the prior art. Such citations shall be entered in the 
patent file except as set forth in §§ 1.502 and 1.902.

(b)If the person making the citation wishes his or her identity 
to be excluded from the patent file and kept confidential, the 
citation papers must be submitted without any identification of the 
person making the submission.

(c)Citation of patents or printed publications by the public 
in patent files should either: (1) Reflect that a copy of the same 
has been mailed to the patent owner at the address as provided for 
in § 1.33(c); or in the event service is not possible (2) Be filed 
with the Office in duplicate.
|}


{{Statute|37 CFR 1.502. Processing of prior art citations during an ex parte reexamination proceeding.}}

Citations by the patent owner under § 1.555 and by an ex partereexamination requester under either § 1.510 or § 1.535 will be 
entered in the reexamination file during a reexamination proceeding. 
The entry in the patent file of citations submitted after the 
date of an order to reexamine pursuant to § 1.525 by persons other 
than the patent owner, or an ex parte reexamination requester 
under either § 1.510 or § 1.535, will be delayed until the reexamination 
proceeding has been terminated. See § 1.902 for processing 
of prior art citations in patent and reexamination files during an 
inter partes reexamination proceeding filed under § 1.913.
|}


{{Statute|37 CFR 1.902. Processing of prior art citations during an inter partes reexamination proceeding.}}
Citations by the patent owner in accordance with § 1.933 and 
by 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 citations submitted after 
the date of an order for reexamination pursuant to § 1.931 by persons 
other than the patent owner, or the third party requester under 
either § 1.915 or § 1.948, will be delayed until the inter partesreexamination proceeding has been terminated. See § 1.502 for 
processing of prior art citations in patent and reexamination files 
during an ex parte reexamination proceeding filed under § 1.510.
|}


Prior art in the form of patents or printed publications 
may be cited to the Office for placement into the 
patent files. Such citations may be made without payment 
of a fee. Citations of prior art may be made separate 
from and without a request for reexamination.

The basic purpose for citing prior art in patent files 
is to inform the patent owner and the public in general 
that such patents or printed publications are in existence 
and should be considered when evaluating the 
validity of the patent claims. Placement of citations in 
the patent file along with copies of the cited prior art 
will also ensure consideration thereof during any subsequent 
reissue or reexamination proceeding.

The citation of prior art provisions of 35 U.S.C. 301and 37 CFR 1.501 do not apply to citations or protests 
filed in pending applications.

==2203 Persons Who May Cite Prior Art==

The patent owner, or any member of the public, 
may submit prior art citations of patents or printed 
publications to the Office. 35 U.S.C. 301 states that 
“Any person at any time may cite to the Office. . . .”

“Any person” may be a corporate or governmental 
entity as well as an individual.

If a person citing prior art desires his or her identity 
to be kept confidential, such a person need not identify 
himself or herself.

“Any person” includes patentees, licensees, reexamination 
requesters, real parties in interest, persons 
without a real interest, and persons acting for real parties 
in interest without a need to identify the real party 
of interest.

The statute indicates that “at the written request of 
the person citing the prior art, his or her identity will 
be excluded from the patent file and kept confidential”. 
Although an attempt will be made to exclude 
any such written request from the public files, since 
the review will be mainly clerical in nature, complete 
assurance of such exclusion cannot be given. Persons 
citing art who desire to remain confidential are therefore 
advised to not identify themselves anywhere in 
their papers.




 

Confidential citations should include at least an 
unsigned statement indicating that the patent owner 
has been sent a copy of the citation papers. In the 
event that it is not possible to serve a copy on the 
patent owner, a duplicate copy should accompany the 
original of the prior art citation, when the original is 
filed with the Office.

Patent examiners should not, at their own initiative, 
place in a patent file or forward for placement in the 
patent file, any citations of prior art. Patent examiners 
are charged with the responsibility of making decisions 
as to patentability for the Director of the 
Office. Any activity by examiners which would 
appear to indicate that patent claims are not patentable, 
outside of those cases pending before them, is 
considered to be inappropriate.

==2204 Time for Filing Prior Art Citation==

Citations of prior art may be filed “at any time” 
under 35 U.S.C. 301. However, this period has been 
defined by rule (37 CFR 1.501(a)) to be “any time 
during the period of enforceability of a patent.” The 
period of enforceability is the length of the term of the 
patent plus the 6 years under the statute of limitations 
for bringing an infringement action (35 U.S.C. 286). 
In addition, if litigation is instituted within the period 
of the statute of limitations, citations may be submitted 
after the statute of limitations has expired, as long 
as the patent is still enforceable against someone. 
While citations of prior art may be filed at any time 
during the period of enforceability of the patent, citations 
submitted after the date of any order to reexamine 
will not be entered into the patent file until the 
pending reexamination proceeding has been concluded 
(37 CFR 1.501(a)), unless the citations are 
submitted (A) by the patent owner, (B) by an ex partereexamination requester who also submits the fee and 
other documents required under 37 CFR 1.510, (C) by 
an inter partes reexamination requester who also submits 
the fee and other documents required under 37 
CFR 1.915, (D) in an ex parte third party requester’s 
reply under 37 CFR 1.535, or (E) as an enterable submission 
pursuant to 37 CFR 1.948 in an inter partesreexamination proceeding. To ensure that prior art 
cited by a third party is considered without the payment 
of another reexamination fee, it must be presented 
before reexamination is ordered.

The purpose of this rule is to prevent harassment of 
the patent owner due to frequent submissions of prior 
art citations during reexamination proceedings.

==2205 Content of Prior Art Citation==

The prior art which may be submitted under 35 
U.S.C. 301 is limited to “written prior art consisting 
of patents or printed publications.”

An explanation is required of how the person submitting 
the prior art considers it to be pertinent and 
applicable to the patent, as well as an explanation of 
why it is believed that the prior art has a bearing on 
the patentability of any claim of the patent. The prior 
art citation must, at a minimum, contain some broad 
statement of the pertinency and applicability of the art 
submitted to the patentability of the claims of the 
patent for which the prior art citation is made. This 
would be met, for example, by a statement that the art 
submitted in the prior art citation under 37 CFR 1.501was made of record in a foreign or domestic application 
having the same or related invention to that of the 
patent. Citations of prior art by patent owners may 
also include an explanation of how the claims of the 
patent differ from the prior art cited.

It is preferred that copies of all the cited prior art 
patents or printed publications and any necessary 
English translation be included so that the value of the 
citations may be readily determined by persons 
inspecting the patent files and by the examiner during 
any subsequent reissue or reexamination proceeding.

All prior art citations filed by persons other than the 
patent owner must either indicate that a copy of the 
citation has been mailed to, or otherwise served on, 
the patent owner at the correspondence address as 
defined under 37 CFR 1.33(c), or if for some reason 
service on the patent owner is not possible, a duplicate 
copy of the citation must be filed with the Office 
along with an explanation as to why the service was 
not possible. The most recent address of the 
attorney 
or agent of record may be obtained from the Office’s 
register of registered patent attorneys and agents 
maintained by  
the Office of Enrollment and Discipline 
pursuant to 37 
CFR 10.5 and 10.11(a).

All prior art citations submitted should identify the 
patent in which the citation is to be placed by the 
patent number, issue date, and patentee.

A cover sheet with an identification of the patent 
should have firmly attached to it all other documents 




 

relating to the citation so that the documents will not 
become separated during processing. The documents 
themselves should also contain, or have placed 
thereon, an identification of the patent for which they 
are intended.

Affidavits or declarations or other written evidence 
relating to the prior art documents submitted 
may accompany the citation to explain the contents or 
pertinent dates in more detail. A commercial success 
affidavit tied in with a particular prior art document 
may also be acceptable. For example, the patent 
owner may wish to cite a patent or printed publication 
which raises the issue of obviousness of at least one 
patent claim. Together with the cited art, the patent 
owner may file (A) an affidavit of commercial success 
or other evidence of nonobviousness, or (B) an affidavit 
which questions the enablement of the teachings of 
the cited prior art.

No fee is required for the submission of citations 
under 37 CFR 1.501.

A prior art citation is limited to the citation of patents 
and printed publications and an explanation of 
the pertinency and applicability of the patents and 
printed publications. This may include an explanation 
by the patent owner as to how the claims differ from 
the prior art. It may also include affidavits and declarations. 
The prior art citation cannot include any issue 
which is not directed to patents and printed publications. 
Thus, for example, a prior art citation cannot 
include a statement as to the claims violating 
35 
U.S.C. 112, a statement as to the public use of the 
claimed invention, or a statement as to the conduct of 
the patent owner. A prior art citation must be directed 
to patents and printed publications and cannot discuss 
what the patent owner did, or failed to do, with 
respect to submitting and/or describing patents and 
printed publications, because that would be a statement 
as to the conduct of the patent owner. The citation 
also should not contain argument and discussion 
of references previously treated in the prosecution of 
the invention which matured into the patent or references 
previously treated in a reexamination proceeding 
as to the patent. 

If the prior art citation contains any issue not 
directed to patents and printed publications, it should 
not be entered into the patent file, despite the fact that 
it may otherwise contain a complete submission of 
patents and printed publications with an explanation 
of the pertinency and applicability. Rather, the prior 
art citation should be returned to the sender as 
described in MPEP § 2206.

Examples of letters submitting prior art under 
37 
CFR 1.501 follow.

EXAMPLE I

Submission by a third party: 

Example I (Submission by a third party) [Page 1 of 5]
IN THE UNITED STATES

PATENT AND TRADEMARK OFFICE

In re patent of

Joseph Smith

Patent No. 9,999,999

Issued: July 7, 2000

For: Cutting Tool

Submission of Prior Art Under 37 CFR

1.501

Hon. Commissioner for Patents

P.O. Box 1450

Alexandria, VA 22313-1450





Example I





 

Example I (continues)


Example I (continues)


Example I (continues)





 

EXAMPLE II

Submission by the patent owner:

Example II (Submission by the patent owner) [Page 1 of 3]
IN THE UNITED STATES

PATENT AND TRADEMARK OFFICE

In re patent of

Joseph Smith

Patent No. 9,999,999

Issued: July 7, 2000

For: Cutting Tool

Submission of Prior Art Under 37 CFR

1.501

Hon. Commissioner for Patents

P.O. Box 1450

Alexandria, VA 22313-1450

S i r :
The undersigned herewith submits in the above identified 
patent the following prior art (including copies thereof) which 
is pertinent and applicable to the patent and is believed to have 
a bearing on the patentability of at least claims 1-3 thereof:





Example II


As to claim 3, while the cutting blades required by this claim 
are shown in Paulk et al, the remainder of the claimed structure 
is found only in Weid et al. A person of ordinary skill in the art 
at the time the invention was made would not have found it 
obvious to substitute the cutting blades of Paulk et al for those 
of Weid et al. In fact, the disclosure of Weid et al would lead a 
person of ordinary skill in the art away from the use of cutting 
blades such as shown in Paulk et al.

The reference to McGee, while generally similar, lacks the particular 
cooperation between the elements which is specifically 
set forth in each of claims 1-3.

Respectfully submitted,

(Signed)


William Green

Attorney for Patent Owner

Reg. No. 29760





==2206 Handling of Prior Art Citation==

Prior art citations received in the Office will be forwarded 
to the Technology Center (TC) that currently 
examines the class and subclass in which the patent to 
which the prior art citations are addressed is classified 
as an original.

It is the responsibility of the TC to immediately 
determine whether a citation meets the requirements 
of the statute and the rules and to enter it into the 
patent file at the appropriate time if it is proper.

If a proper citation is filed after the date of an order 
for reexamination but it is not entitled to entry pursuant 
to the reexamination rules, the citation is retained 
(stored) in the TC until the reexamination is concluded. 
Note 37 CFR 1.502 and 1.902 and MPEP 
§
 
2294. An e-tag should be placed in the reexamination 
file history as a reminder of the citation to be 
placed in the patent file after conclusion of the reexamination 
proceeding. The citation is then placed in 
the TC’s citation storage file. After the reexamination 
proceeding is concluded, the citation is removed from 
the storage file and processed for placement in the 
patent file. Citations filed after the date of an order for 
reexamination which are not entitled to entry pursuant 
to the reexamination rules will not be considered by 
the examiner during the reexamination.




 

I.CITATION QUALIFIES FOR ENTRY 
UNDER 37 CFR 1.501

A.Citations by Third Party

1.Prior to Order in Any Pending Reexamination 
Proceeding

If the citation is proper (i.e., limited to patents and 
printed publications) and is filed prior to an order in a 
reexamination proceeding, it should be immediately 
entered into the reexamination file. If no reexamination 
is pending for the patent, the citation should be 
placed in the patent file. If the citation includes an 
indication of service on the patent owner, the citation 
is merely timely entered and no notice of such entry is 
sent to any party. If the citation does not include an 
indication of service, the patent owner should be notified 
that a citation of prior art has been entered into 
the patent file. If a duplicate copy of the citation was 
filed, the duplicate copy should be sent to the patent 
owner along with the notification. If no duplicate 
copy is present, no copy will be sent with the notification. 
Wording similar to the following should be used:

“A citation of prior art under 35 U.S.C. 301 and 
37 
CFR 1.501 has been filed on ____ in your patent 
number ____ entitled________.

This notification is being made to inform you that 
the citation of prior art has been placed in the file 
wrapper /file history of:

[ ] the above identified patent.

[ ] reexamination control # ____________.

The person submitting the prior art:

1. [ ] was not identified

2. [ ] is confidential

3. [ ] is ____________.”

2.After the Order in Any Pending 
Reexamination Proceeding

If the citation is proper but is filed after an order for 
reexamination in a pending reexamination, the citation 
is not entered at the time because of the ongoing 
reexamination, but rather is stored until the conclusion 
of the reexamination proceeding, after which the 
citation is entered into the patent file. The patent 
owner and sender (if known) should be alerted of this 
by a letter providing notification. If there is a third 
party requester, the third party requester should also 
be sent a copy of the notification letter pursuant to 37 
CFR 1.550(f). Such notification is important to enable 
the patent owner to consider submitting the prior art 
under 37 CFR 1.555 or 1.933 during the reexamination. 
Such notification will also enable the third party 
sender to consider the desirability of filing a separate 
request for reexamination. If the citation does not 
include service of a copy on the patent owner and a 
duplicate copy is submitted, the duplicate copy should 
be sent to the patent owner along with the notification. 
If a duplicate copy is not present, no copy will accompany 
the notification to the patent owner. In this situation, 
the original copy (in storage) should be made 
available for copying by the patent owner. If the citation 
includes service of a copy on the patent owner, 
the citation is placed in storage and not entered until 
the reexamination is concluded. The patent owner and 
third party sender (if known) should be given notice 
of this action.

An example of a letter (in a patent owner filed reexamination) 
giving notice to the patent owner and third 
party sender, where the citation was filed after the 
order for ex parte reexamination, is as follows.




 

John A. Jones

Jones & Smith

1020 United First Bldg.

1033 Any Street

U.S. Town, Washington 98121




(Citation Sender)

Richard A. Davis

The A.B. Good Co.

Patent Law Dept.

9921 Any Street

Any City, Ohio 44141

(Patent Owner)

In re Doe, et al 

Examination Proceeding 

Control No. 90/999,999 

Filed: February 7, 2000 

For: U.S. Patent No. 9,999,999 

: 

: 
: NOTIFICATION RE
: PRIOR ART CITATION

: 

The prior art citation filed May 19, 2000, is a proper citation under 37 CFR 1.501(a); however, it was 
filed after the May 2, 2000, date of the order for reexamination in reexamination control # 90/999,999.

Because the prior art citation was filed after the date of the order for reexamination, the citation is being 
retained in the Technology Center (TC1700) until the reexamination is concluded. Note 37 CFR 1.501 
(a) and MPEP § 2294. At that time, the citation will be processed for placement in the patent file of patent # 
9,999,999.

The prior art citation filed May 19, 2000, will not be considered in reexamination control # 90/999,999.

The patent owner and sender of the citation are being provided with a copy of this notification. If appropriate, 
the patent owner may wish to consider submitting prior art from the prior art citation pursuant to 37 
CFR 1.555 during the reexamination proceeding (reexamination control # 90/999,999). In addition, if 
appropriate, the sender may file a request for reexamination to place the art of the prior art citation before 
the patent examiner.

Kenneth M. Schor

Special Programs Examiner

Technology Center 3700








 

B.Citation Filed by Patent Owner

If a proper prior art citation is filed by the patent 
owner, it should be entered in the file. This is true 
whether the citation is filed prior to or after an order 
for reexamination has been mailed. No notification to 
the patent owner is necessary.

The following diagram shows the various situations 
which can occur when a proper prior art citation is 
filed and the action to be taken for each alternative situation:





 

Processing of Citations of Prior Art which Qualify for Entry under 37 CFR 1.501Processing of Citations of Prior Art which Qualify for Entry under 37 CFR 1.501





 

II.CITATION DOES NOT QUALIFY FOR 
ENTRY UNDER 37 CFR 1.501

 A.Citation by Third Party

If the citation is not proper (i.e., it is not limited to 
patents or printed publications), it should not be 
entered in the patent file. The sender (if known) and 
the patent owner in all cases should be notified that 
the citation is improper and that it is not being entered 
in the patent file. The handling of the citation will 
vary depending on the particular following situation.

1.Service of Copy Included

Where the citation includes an indication of service 
of copy on the patent owner and the identity of the 
third party sender is known, the original citation paper 
should be returned to the third party sender along with 
the notification of nonentry. If the identity of the third 
party sender is not known, the original citation papers 
should be discarded.

2.Service of Copy Not Included; Identity of 
Third Party Sender Known

Where the citation does not include an indication of 
service on the patent owner, the identity of the third 
party sender is known, and a duplicate copy of the 
citation is present, the original citation papers should 
be returned to the third party sender and the duplicate 
copy should be sent to the patent owner along with the 
notification of nonentry. If the duplicate copy required 
in 37 CFR 1.501(c) is not present, the original citation 
papers should be sent to the PATENT OWNER along 
with the notification of nonentry. The third party 
sender should be sent a notification that the citation 
was not entered and that the original citation papers 
were sent to the patent owner.

3.Service of Copy Not Included; Identity of 
Third Party Sender Not Known

Where the citation does not include an indication of 
service, the identity of the third party sender is not 
known, and a duplicate copy of the citation is or is not 
present, the duplicate copy (if present) should be discarded 
and the original citation papers should be sent 
to the patent owner along with the notification of nonentry.


B.Citation Filed by the Patent Owner

If an improper prior art citation under 37 CFR 
1.501 is filed by the patent owner prior to an order for 
reexamination, it should not be entered in the file. 

The patent owner should be notified of the nonentry, 
and the citation papers should be returned to the 
patent owner along with the notification. Prior art submission 
filed by the patent owner after an order for 
reexamination should be entered in the file under 37 
CFR 1.555 (for ex parte reexamination) or under 37 
CFR 1.933 (for inter partes reexamination).

The following diagram shows the various situations 
which can occur when an improper prior art citation is 
filed and the action to be taken for each alternative situation. 
Any unusual problems should be brought to 
the attention of the Office of Patent Legal Administration.





 

Processing of Citations of Prior Art which Do Not Qualify for Entry under 37 CFR 1.501Processing of Citations of Prior Art which Do Not Qualify for Entry under 37 CFR 1.501





 

==2207 Entry of Court Decision in Patent File==

The Solicitor’s Office processes notices required by 
35 
U.S.C. 290, received from the clerks of the various 
courts, and has them entered in the patent file. However, 
it is considered desirable that the entire court 
decision be supplied to the Office for entry into the 
patent file. Accordingly, the Office will accept at any 
time from any party for placement in the patent file, 
submissions of the following: copies of notices of 
suits , copies of notices regarding other proceedings 
involving the patent and copies of decisions 
from litigations or other proceedings involving the 
patent. The Office will also accept for entry into the 
patent file other court papers, or papers filed in the 
court, from litigations or other proceedings involving 
the patent. It is to be noted that if the Office, in its 
sole discretion, deems the volume of the papers filed 
from litigations or other proceedings to be too extensive/
lengthy, the Office may return all or part of the 
submission. In such an instance, a party may limit the 
submission in accordance with what is deemed relevant, 
and resubmit the papers. Such submissions 
must be provided without additional comment. Persons 
making such submissions must limit the submission 
to the notification and not include further 
arguments or information. It is to be understood that 
highlighting of certain text by underlining, fluorescent 
marker, etc., goes beyond bare notice of the prior or 
concurrent proceedings. Any proper submission will 
be promptly placed on record (entered) in the patent 
file. Entry of these submissions is performed by the 
Files Repository personnel, unless a reexamination 
proceeding is pending, in which case, the Central 
Reexamination Unit, the Technology Center, or 
other area of the Office having responsibility for the 
reexamination enters the submission.

Where a request for reexamination has been 
filed, see MPEP § 2282 for ex parte reexamination 
and MPEP § 2686 for inter partes reexamination. See 
MPEP § 2240 and § 2242 for handling of requests for 
ex parte reexamination of patents involved in litigation. 
See MPEP § 2640 and § 2642 for handling of 
requests for inter partes reexamination of patents 
involved in litigation.

==2208 Service of Citation on Patent Owner==

A copy of any submission of a citation of prior art 
patents or printed publications in a patent file should 
be served on the patent owner so that the patent owner 
is kept fully informed as to the content of his or her 
patent file wrapper /file history. See MPEP § 2206for handling of prior art citations.

The service to the patent owner should be 
addressed to the correspondence address as set forth 
in 37 CFR 1.33(c). See MPEP § 2222 as to the correspondence 
address. 

==2209 Ex Parte Reexamination==

Procedures for reexamination of issued patents 
began on July 1, 1981, the date when the reexamination 
provisions of Public Law 96-517 came into 
effect.

The reexamination statute and rules permit any person 
to file a request for an ex parte reexamination 
containing certain elements and the fee required under 
37 CFR 1.20(c)(1). The Office initially determines if 
“a substantial new question of patentability” (35 
U.S.C. 303(a)) is presented. If such a new question 
has been presented, reexamination will be ordered. 
The reexamination proceedings which follow the 
order for reexamination are very similar to regular 
examination procedures in patent applications; however, 
there are notable differences. For example, there 
are certain limitations as to the kind of rejections 
which may be made, special reexamination forms to 
be used, and time periods set to provide “special dispatch.” 
When the prosecution of a reexamination 
proceeding is terminated, a reexamination certificate 
is issued which indicates the status of all claims 
following the reexamination. Unless prosecution is 
reopened by the Director, the reexamination proceeding 
is concluded by the issuance and publication of a 
reexamination certificate.

The following sections of this chapter explain the 
details of reexamination.

The intent of the reexamination procedures covered 
in this chapter include the following:

(A)To provide procedures for reexamination of 
patents;

(B)To implement reexamination in an essentially 
ex parte manner;




 

(C)To minimize the processing costs and complexities 
of reexamination;

(D)To maximize respect for the reexamined 
patent;

(E)To provide procedures for prompt and timely 
determinations by the Office in accordance with the 
“special dispatch” requirements of 35 U.S.C. 305.

The basic characteristics of ex parte reexamination 
are as follows:

(A)Anyone can request reexamination at any 
time during the period of enforceability of the patent;

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

(C)A substantial new question of patentability 
must be present for reexamination to be ordered;

(D)If ordered, the actual reexamination proceeding 
is ex parte in nature;

(E)Decision on the request must be made no later 
than 3 months from its filing, and the remainder of 
proceedings must proceed with “special dispatch” 
within the Office;

(F)If ordered, a reexamination proceeding will 
normally be conducted to its conclusion and the issuance 
of a reexamination certificate;

(G)The scope of a claim cannot be enlarged by 
amendment;

(H)All reexamination and patent files are open to 
the public, but see paragraph (I) below;

 (I) The reexamination file is scanned into IFW
to provide an electronic format copy of the file. All 
public access to and copying of the reexamination file 
may be made from the electronic format copy 
available through PAIR. Any remaining paper 
files are not available to the public.

==2210 Request for Ex Parte Reexamination==

35 U.S.C. 302. Request for reexamination.

Any person at any time may file a request for reexamination by 
the Office of any claim of a patent on the basis of any prior art 
cited under the provisions of section 301 of this title. The request 
must be in writing and must be accompanied by payment of a 
reexamination fee established by the Director pursuant to the provisions 
of section 41 of this title. The request must set forth the 
pertinency and manner of applying cited prior art to every claim 
for which reexamination is requested. Unless the requesting person 
is the owner of the patent, the Director promptly will send a 
copy of the request to the owner of record of the patent.

37 CFR 1.510. Request for ex parte reexamination.

(a)Any person may, at any time during the period of 
enforceability of a patent, file a request for an ex parte reexamination 
by the Office of any claim of the patent on the basis of prior 
art patents or printed publications cited under § 1.501. The request 
must be accompanied by the fee for requesting reexamination set 
in § 1.20(c)(1).

(b)Any request for reexamination must include the following 
parts:

(1)A statement pointing out each substantial new question 
of patentability based on prior patents and printed publications.


(2)An identification of every claim for which reexamination 
is requested, and a detailed explanation of the pertinency and 
manner of applying the cited prior art to every claim for which 
reexamination is requested. If appropriate the party requesting 
reexamination may also point out how claims distinguish over 
cited prior art.

(3)A copy of every patent or printed publication relied 
upon or referred to in paragraph (b)(1) and (2) of this section 
accompanied by an English language translation of all the necessary 
and pertinent parts of any non-English language patent or 
printed publication.

(4)A copy of the entire patent including the front face, 
drawings, and specification/claims (in double column format) for 
which reexamination is requested, and a copy of any disclaimer, 
certificate of correction, or reexamination certificate issued in the 
patent. All copies must have each page plainly written on only one 
side of a sheet of paper.

(5)A certification that a copy of the request filed by a 
person other than the patent owner has been served in its entirety 
on the patent owner at the address as provided for in § 1.33(c). 
The name and address of the party served must be indicated. If 
service was not possible, a duplicate copy must be supplied to the 
Office.



(c)If the request does not include the fee for requesting ex 
parte reexamination required by paragraph (a) of this section and 
meet all the requirements by paragraph (b) of this section, then the 
person identified as requesting reexamination will be so notified 
and will generally be given an opportunity to complete the request 
within a specified time. Failure to comply with the notice will 
result in the ex parte reexamination request not being granted a 
filing date, and will result in placement of the request in the patent 
file as a citation if it complies with the requirements of § 1.501.

(d)The filing date of the request for ex parte reexamination 
is the date on which the request satisfies all the requirements of 
this section.

(e)A request filed by the patent owner may include a proposed 
amendment in accordance with § 1.530.




 

(f)If a request is filed by an attorney or agent identifying 
another party on whose behalf the request is being filed, the attorney 
or agent must have a power of attorney from that party or be 
acting in a representative capacity pursuant to § 1.34(a).

Any person, at any time during the period of 
enforceability of a patent, may file a request for ex 
parte reexamination by the U.S. Patent and Trademark 
Office of any claim of the patent based on prior 
art patents or printed publications. The request must 
include the elements set forth in 37 CFR 1.510(b) (see 
MPEP §
 
2214) and must be accompanied by the fee as 
set forth in 37 CFR 1.20(c)(1). If a request filed by the 
patent owner includes a proposed amendment in 
accordance with 37 CFR 1.530, excess claims fees 
under 37 CFR 1.20(c)(3) and (c)(4) may also apply; 
see MPEP § 2250.03. No attempt will be made to 
maintain a requester’s name in confidence.

After the request for reexamination, including the 
entire fee for requesting reexamination, is received in 
the Office, no abandonment, withdrawal, or striking 
of the request is possible, regardless of who requests 
the same. In some limited circumstances, such as after 
a final court decision where all of the claims are 
finally held invalid, a reexamination order may be 
vacated, see MPEP § 2286.

==2211 Time for Requesting Ex ParteReexamination==

Under 37 CFR 1.510(a), any person may, at any 
time during the period of enforceability of a patent, 
file a request for ex parte reexamination. This 
period was set by rule, since the Office considered 
that Congress could not have intended expending 
Office resources on deciding patent validity questions 
in patents which cannot be enforced. In this regard see 
Patlex Corp. v. Mossinghoff, 758 F.2d 594, 225 USPQ 
243, 249 (Fed. Cir. 1985). The period of enforceability 
is determined by adding 6 years to the date on 
which the patent expires. The patent expiration date 
for a utility patent, for example, is determined by taking 
into account the term of the patent, whether maintenance 
fees have been paid for the patent,  whether 
any disclaimer was filed as to the patent to shorten its 
term, any patent term extensions or adjustments for 
delays within the Office under 35 U.S.C. 154 (see 
MPEP § 2710, et seq.), and any patent term extensions 
available under 35 U.S.C. 156 for premarket 
regulatory review (see MPEP § 2750 et. seq.). Any 
other relevant information should also be taken into 
account. In addition, if litigation is instituted within 
the period of the statute of limitations, requests for 
reexamination may be filed after the statute of limitations 
has expired, as long as the patent is still enforceable 
against someone.

==2212 Persons Who May File a Request for Ex Parte Reexamination==

37 CFR 1.510. Request for ex parte reexamination.

(a)Any person may, at any time during the period of 
enforceability of a patent, file a request for an ex parte reexamination 
by the Office of any claim of the patent on the basis of prior 
art patents or printed publications cited under § 1.501. The request 
must be accompanied by the fee for requesting reexamination set 
in § 1.20(c)(1).



35 U.S.C. 302 and 37 CFR 1.510(a) both indicate 
that “any person” may file a request for reexamination 
of a patent. Accordingly, there are no persons who are 
excluded from being able to seek reexamination. Corporations 
and/or governmental entities are included 
within the scope of the term “any person.” The patent 
owner can ask for reexamination which will be limited 
to an ex parte consideration of prior art patents 
or printed publications. If the patent owner wishes to 
have a wider consideration of issues by the Office, 
including matters such as prior public use or on
sale, the patent owner may file a reissue application. It 
is also possible for the Director of the Office to 
initiate reexamination on the Director’s own initiative 
under 37 
CFR 1.520. Reexamination will be 
initiated by the Director’s on a very limited basis, 
such as where a general public policy question is at 
issue and there is no interest by “any other person.” 
Some of the persons likely to use reexamination are 
patentees, licensees, potential licensees, attorneys 
without identification of their real client in interest, 
infringers, potential exporters, patent litigants, interference 
applicants, and International Trade Commission 
respondents. The name of the person who files 
the request will not be maintained in confidence.




 



===2212.01 Inquiries from Persons Other Than the Patent Owner===

Examiners should not discuss or answer inquiries 
from third parties (i.e., parties who are not the patent 
owner) in reexamination proceedings. A party who is 
not the patent owner should be referred by the examiner 
to the Technology Center (TC) or Central Reexamination 
Unit (CRU) Special Program Examiner 
(SPRE) for the examiner’s art unit. The SPRE will 
address any such questions. Only questions on strictly 
procedural matters, i.e., not directed to any specific 
reexamination proceeding, may be discussed by the 
SPRE with that party.

Employees of the Office, particularly patent examiners 
who conducted a concluded reexamination proceeding, 
should not discuss or answer inquiries from 
any person outside the Office as to whether a certain 
reference or other particular evidence was considered 
during the proceeding and whether a claim would 
have been allowed over that reference or other evidence 
had it been considered during the proceeding.

Patent practitioners must not make improper inquiries 
of members of the patent examining corps and the 
Office as a whole. See 37 CFR 10.23. Inquiries from 
members of the public relating to the matters discussed 
above must, of necessity, be refused and such 
refusal should not be considered discourteous or an 
expression of opinion by the Office as to the validity, 
patentability, or enforceability of the patent.

The definitions set forth in 37 CFR 104.1 and the 
exceptions in 37 CFR 104.21 are applicable to this 
section.

==2213 Representative of Requester==

37 CFR 1.510. Request for ex parte reexamination.



(f)If a request is filed by an attorney or agent identifying 
another party on whose behalf the request is being filed, the attorney 
or agent must have a power of attorney from that party or be 
acting in a representative capacity pursuant to § 1.34(a).

Where an attorney or agent files a request for an 
identified client (the requester), he or she may act 
under either a power of attorney from the client, or 
act in a representative capacity under 37 CFR 1.34(a), 
see 37 CFR 1.510(f). While the filing of the power 
of attorney is desirable, processing of the reexamination 
request will not be delayed due to its absence.

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

All correspondence for a requester that is not the 
patent owner should be addressed to the representative 
of the requester, unless a specific indication is 
made to forward correspondence to another address.

If the request is filed by a person on behalf of the 
patent owner, correspondence will be directed to the 
patent owner at the address as indicated in 37 CFR 
1.33(c), regardless of the address of the person filing 
the request. See MPEP §
 
2222 for a discussion of who 
receives correspondence on behalf of a patent owner 
and how changes in the correspondence address are to 
be made.

A patent owner may not be represented during a 
reexamination proceeding by an attorney or other person 
who is not registered to practice before the Office, 
since those individuals are prohibited by 37 CFR 
1.33(c) from signing amendments and other papers 
filed in a reexamination proceeding on behalf of the 
patent owner.

==2214 Content of Request for Ex ParteReexamination==

37 CFR 1.510. Request for ex parte reexamination.

(a)Any person may, at any time during the period of 
enforceability of a patent, file a request for an ex parte reexamination 
by the Office of any claim of the patent on the basis of prior 
art patents or printed publications cited under § 1.501. The request 
must be accompanied by the fee for requesting reexamination set 
in § 1.20(c)(1).

(b)Any request for reexamination must include the following 
parts:

(1)A statement pointing out each substantial new question 
of patentability based on prior patents and printed publications.


(2)An identification of every claim for which reexamination 
is requested, and a detailed explanation of the pertinency and 
manner of applying the cited prior art to every claim for which 
reexamination is requested. If appropriate the party requesting 
reexamination may also point out how claims distinguish over 
cited prior art.

(3)A copy of every patent or printed publication relied 
upon or referred to in paragraph (b)(1) and (2) of this section 
accompanied by an English language translation of all the necessary 
and pertinent parts of any non-English language patent or 
printed publication.

(4)A copy of the entire patent including the front face, 
drawings, and specification/claims (in double column format) for 
which reexamination is requested, and a copy of any disclaimer, 




 

certificate of correction, or reexamination certificate issued in the 
patent. All copies must have each page plainly written on only one 
side of a sheet of paper.

(5)A certification that a copy of the request filed by a 
person other than the patent owner has been served in its entirety 
on the patent owner at the address as provided for in § 1.33(c). 
The name and address of the party served must be indicated. If 
service was not possible, a duplicate copy must be supplied to the 
Office.



37 CFR 1.510(a) requires the payment of the fee 
specified in 37 CFR 1.20(c)(1) for a request for reexamination. 
See MPEP § 2215. If a request filed by the 
patent owner includes a proposed amendment in 
accordance with 37 CFR 1.530, excess claims fees 
under 37 CFR 1.20(c)(3) and (c)(4) may also apply; 
see MPEP § 2250.03.

37 CFR 1.510(b) sets forth the required elements of 
a request for ex parte reexamination. The elements are 
as follows:

“(1) a statement pointing out each substantial new 
question of patentability based on prior patents and 
printed publications.”

This statement should clearly point out what the 
requester considers to be the substantial new question 
of patentability which would warrant a reexamination. 
The cited prior art should be listed on a form PTO/
SB/08A or 08B, or PTO/SB/42 (or on a form having a 
format equivalent to one of these forms) by the 
requester. See also MPEP § 2217.

A request for reexamination must assert a substantial 
new question of patentability. See MPEP 
§ 2216. A requester may not, in a request for reexamination, 
argue that the submitted references do not 
raise a substantial new question of patentability, and 
that no order for reexamination should be issued.

“(2) An identification of every claim for which reexamination 
is requested, and a detailed explanation of the 
pertinency and manner of applying the cited prior art to 
every claim for which reexamination is requested. If 
appropriate the party requesting reexamination may also 
point out how claims distinguish over cited prior art.”

The request should apply the cited prior art to every 
claim for which reexamination is requested. See 
MPEP § 2217. If the request is filed by the patent 
owner, he or she may also indicate how the claims distinguish 
from the cited prior art patents and printed 
publications.

“(3) A copy of every patent or printed publication 
relied upon or referred to in paragraph (b)(1) and (2) of 
this section accompanied by an English language translation 
of all the necessary and pertinent parts of any non- 
English language patent or printed publication.”

A copy of each cited patent or printed publication, 
as well as a translation of each non-English document 
(or a translation of at least the portion(s) relied upon) 
is required so that all materials will be available to the 
examiner for full consideration. See MPEP § 2218.

“(4) A copy of the entire patent including the front 
face, drawings, and specification/claims (in double column 
format) for which reexamination is requested, and a 
copy of any disclaimer, certificate of correction, or reexamination 
certificate issued in the patent. All copies must 
have each page plainly written on only one side of a sheet 
of paper.”

A copy of the patent, for which reexamination is 
requested, should be provided with the specification 
and claims submitted in a double column format. The 
drawing pages of the printed patent are presented as 
they appear in the printed patent; the same is true for 
the front page of the patent. Thus, a full copy of the 
printed patent (including the front page) can be used 
to provide the abstract, drawings, specification, and 
claims of the patent for the reexamination request. 
The printed patent is to be reproduced on only one 
side of the paper; a two sided copy of the patent is notproper. See MPEP § 2219.

Any disclaimer, certificate of correction, or reexamination 
certificate issued in the patent becomes a 
part of the patent. Thus, a copy of each must be supplied 
in order to provide the complete patent. The 
copy must have each page plainly written on only one 
side of a sheet of paper.

“(5) A certification that a copy of the request filed by a 
person other than the patent owner has been served in its 
entirely on the patent owner at the address as provided for 
in § 1.33(c). The name and address of the party served 
must be indicated. If service was not possible, a duplicate 
copy must be supplied to the Office.”

If the request is filed by a person other than the 
patent owner, a certification that a copy of the request 
papers has been served on the patent owner must be 
included. The certification must set forth the name 
and address employed in serving the patent owner. If 
service was not possible, a duplicate copy of the 
request must be supplied to the Office together with 




 

an explanation of what effort was made to effect service, 
and why that effort was not successful. The 
request should be as complete as possible, since there 
is no guarantee that the examiner will consider other 
prior art when making the decision on the request. 
Also, if no statement under 37 CFR 1.530(b) is filed 
by the patent owner, no later reply under 37 CFR 
1.535 or other submission may be filed by the 
requester in the ex parte reexamination proceeding. 
See also MPEP §
 
2220.

In order to obtain a reexamination filing date, the 
request papers must include the fee for requesting ex 
parte reexamination required by 37 CFR 1.510(a) and 
all of the parts required by 37 CFR 1.510(b). Request 
papers that fail to satisfy all the requirements of 37 
CFR 1.510(a) and (b) are incomplete and will not be 
granted a filing date. See MPEP § 2227.

Form PTO/SB/57 should be helpful to persons filing 
requests for reexamination. The use of this form 
as the transmittal form and cover sheet of a request for 
reexamination is encouraged, but its use is not a 
requirement of the law nor the rules. Immediately 
following is a form PTO/SB/57 and a sample of 
a request for reexamination that would be 
attached to the form PTO/SB/57 cover sheet.

==2215 Fee for Requesting Ex ParteReexamination==

37 CFR 1.510. Request for ex parte reexamination.





(c)If the request does not include the fee for requesting ex 
parte reexamination required by paragraph (a) of this section and 
meet all the requirements by paragraph (b) of this section, then the 
person identified as requesting reexamination will be so notified 
and will generally be given an opportunity to complete the request 
within a specified time. Failure to comply with the notice will 
result in the ex parte reexamination request not being granted a 
filing date, and will result in placement of the request in the patent 
file as a citation if it complies with the requirements of § 1.501.

(d)The filing date of the request for ex parte reexamination 
is the date on which the request satisfies all the requirements of 
this section.



In order for a request to be accepted, be given a filing 
date, and be published in the Official Gazette, 
the request papers must satisfy all the requirements 
of 37 CFR 1.510(a) and (b) and the entire fee 
required under 37 CFR 1.20(c)(1) for filing a request 
for reexamination must be paid. If the request was 
filed by the patent owner and includes a proposed 
amendment in accordance with 37 CFR 1.530, excess 
claims fees under 37 CFR 1.20(c)(3) and (c)(4) may 
also apply; see MPEP § 2250.03.

If the request for ex parte reexamination is subsequently 
denied (see MPEP § 2247 and § 2248), or 
vacated (see MPEP § 2227 and § 2246, subsection 
I), a refund in accordance with 37 
CFR 1.26(c) will 
be made to the identified requester. If the request for 
ex parte reexamination is found to be incomplete and 
the defect is not cured (see MPEP § 2227), a refund in 
accordance with 37 CFR 1.26(a) will be made to the 
identified requester.

If the entire fee for ex parte reexamination is not 
paidor all the requirements of 37 CFR 1.510(a) and 
(b) are not satisfied, the request will be considered to 
be incomplete. See 37 
CFR 1.510 (c) and (d) and 
MPEP § 2227.

Where the entire filing fee is not paid after the 
requester has been given an opportunity to do so, no 
determination on the request will be made. The 
request papers will ordinarily be placed in the patent 
file as a prior art citation, if they comply with the 
requirements for a citation of prior art under 37 CFR 
1.501. See MPEP § 2206 for handling of prior art citations. 


==2216 Substantial New Question of Patentability==

Under 35 U.S.C. 304, the Office must determine 
whether “a substantial new question of patentability” 
affecting any claim of the patent has been raised. 
37 
CFR 1.510(b)(1) requires that a request for exparte reexamination include “a statement pointing out 
each substantial new question of patentability based 
on prior patents and printed publications.” If such a 
new question is found, an order for ex parte reexamination 
of the patent is issued. It is therefore important 
that the request clearly set forth in detail what the 
requester considers the “substantial new question of 
patentability” to be in view of prior patents and 
printed publications. The request should point out 
how any questions of patentability raised are substantially 
different from those raised in the previous 
examination of the patent before the Office.  See 
MPEP § 2242.

Questions relating to grounds of rejection other 
than those based on prior art patents or printed publications 
should not be included in the request and will 
not be considered by the examiner if included. Examples 
of such questions that will not be considered are 
public use, on sale, and fraud.

Affidavits or declarations or other written evidence 
which explain the contents or pertinent dates 
of prior art patents or printed publications in more 
detail may be considered in reexamination. See MPEP 
§ 2258.

==2217Statement in the Request Applying Prior Art==

The third sentence of 35 U.S.C. 302 indicates that 
the “request must set forth the pertinency and manner 
of applying cited prior art to every claim for which 
reexamination is requested.” 37 CFR 1.510(b)(2) 
requires that the request include “[a]n identification of 
every claim for which reexamination is requested, and 
a detailed explanation of the pertinency and manner 
of applying the cited prior art to every claim for which 
reexamination is requested.” If the request is filed by 
the patent owner, the request for reexamination may 




 

also point out how claims distinguish over cited prior 
art.

The prior art applied may only consist of prior art 
patents or printed publications. Substantial new questions 
of patentability may be based upon the following 
portions of 35 
U.S.C. 102:

“(a)...patented or described in a printed publication in 
this or a foreign country, before the invention thereof by 
the applicant for patent, or”

“(b) the invention was patented or described in a 
printed publication in this or a foreign country... more 
than one year prior to the date of the application for patent 
in the United States, or”



“(d) the invention was first patented or caused to be 
patented, or was the subject of an inventor’s certificate, by 
the applicant or his legal representatives or assigns in a 
foreign country prior to the date of the application for 
patent in this country on an application for patent or 
inventor’s certificate filed more than twelve months 
before the filing of the application in the United States, 
or”

“(e) the invention was described in — (1) an application 
for patent, published under section 122(b), by another 
filed in the United States before the invention by the 
applicant for patent or (2) a patent granted on an application 
for patent by another filed in the United States before 
the invention by the applicant for patent, except that an 
international application filed under the treaty defined in 
section 351(a) shall have the effects for the purposes of 
this subsection of an application filed in the United States 
only if the international application designated the United 
States and was published under Article 21(2) of such 
treaty in the English language; or”



“(g)(1) during the course of an interference conducted 
under section 135 or section 291, another inventor 
involved therein establishes, to the extent permitted in 
section 104, that before such person’s invention thereof 
the invention was made by such other inventor and not 
abandoned, suppressed, or concealed, or (2) before such 
person’s invention thereof, the invention was made in this 
country by another inventor who had not abandoned, suppressed, 
or concealed it. In determining priority of invention 
under this subsection, there shall be considered not 
only the respective dates of conception and reduction to 
practice of the invention, but also the reasonable diligence 
of one who was first to conceive and last to reduce to 
practice, from a time prior to conception by the other.”

Substantial new questions of patentability may also 
be presented under 35 U.S.C. 103 which are based on 
the above indicated portions of 35 
U.S.C. 102. See 
MPEP § 706.02(l)(1) for information pertaining to 
references which qualify as prior art under 35 U.S.C. 
102(e)/103. 

Substantial new questions of patentability must be 
based on patents or printed publications. Other matters, 
such as public use or on sale, inventorship, 
35 
U.S.C. 101, 35 U.S.C. 112, fraud, etc., will not be 
considered when making the determination on the 
request and should not be presented in the request. 
Further, a prior art patent or printed publication cannot 
be properly applied as a ground for reexamination 
if it is merely used as evidence of alleged prior public 
use or on sale, insufficiency of disclosure, etc. The 
prior art patent or printed publication must be applied 
directly to claims under 35 U.S.C. 103 and/or an 
appropriate portion of 35 U.S.C. 102 or relate to the 
application of other prior art patents or printed publications 
to claims on such grounds.

The statement applying the prior art may, where 
appropriate, point out that claims in the patent for 
which reexamination is requested are entitled only to 
the filing date of the patent and are not supported by 
an earlier foreign or United States patent application 
whose filing date is claimed. For example, the effective 
date of some of the claims in a patent which 
resulted from a continuing application under 
35 
U.S.C. 120 could be the filing date of the continuing 
application since those claims were not supported 
in the parent application. Therefore, intervening patents 
or printed publications are available as prior art. 
See In re Ruscetta, 255 F.2d 687, 118 USPQ 101 
(CCPA 1958), In re van Langenhoven, 458 F.2d 132, 
173 USPQ 426 (CCPA 1972). See also MPEP § 
201.11.

Double patenting is normally proper for consideration 
in reexamination. See In re Lonardo, 119 F.3d 
960, 43 
USPQ2d 1262 (Fed. Cir. 1997). See also the 
discussion as to double patenting in MPEP § 2258.



I.EXPLANATION MUST BE COMPLETE

The mere citation of new patents or printed publications 
without an explanation does not comply with 
37 
CFR 1.510(b)(2). Requester must present an explanation 
of how the cited patents or printed publications 
are applied to all claims which requester considers to 
merit reexamination. This not only sets forth the 
requester’s position to the Office, but also to the 




 

patent owner (where the patent owner is not the 
requester).

Thus, for example, once the request has cited documents 
(patents and printed publications) and proposed 
combinations of the documents as to patent 
claims 1-10 (for example), the request must explain 
how all of the proposed combinations of each and 
every cited document apply to each of claims 1-10.

Ideally, the required explanation can be provided 
using an appropriately detailed claim chart that compares, 
limitation by limitation, each claim for which 
reexamination is requested with the relevant teachings 
of each reference cited in the request. See the sample 
request for reexamination in MPEP § 2214.

For proposed obviousness rejections, requester 
must provide at least one motivation to combine the 
cited references, and a statement of why the claim(s) 
under reexamination would have been obvious over 
the proposed reference combination. Preferably, the 
requester should quote the pertinent teachings in the 
reference, referencing each quote by page, column 
and line number and any relevant figure numbers. The 
explanation must not lump together the proposed 
rejections or proposed combinations of references. 

Examples of inappropriate language:

- Claim 1 is unpatentable under 35 U.S.C. 102(b) 
as being anticipated by, or in the alternative, 
under 35 U.S.C. 103 as being obvious over the 
Smith reference.

- Claim 1 is unpatentable under 35 U.S.C. 103 as 
being obvious over Smith and/or Charles.

- Claim 2 is unpatentable under 35 U.S.C. 103 as 
being obvious over Smith in view of Jones or Harvey. 
(This could however be used if both Jones and 
Harvey provide a minor teaching which can be 
articulated in a sentence or two.)

- Claims 3 - 10 are unpatentable under 35 U.S.C. 
103 as being obvious over Smith in view of either 
Jones and Cooper or Harvey and Cooper.

- Claims 3 - 10 are unpatentable under 35 U.S.C. 
103 as being obvious over Smith in view of Harvey, 
taken alone or further in view of Cooper.

Examples of appropriate language:

- Claim 1 is unpatentable under 35 U.S.C. 102(b) 
as being anticipated by Smith.

- Claim 1 is unpatentable under 35 U.S.C. 103 as 
being obvious over Smith.

- Claim 1 is unpatentable under 35 U.S.C. 103 as 
being obvious over Charles.

- Claim 2 is unpatentable under 35 U.S.C. 103 as 
being obvious over Smith in view of Jones.

- Claim 2 is unpatentable under 35 U.S.C. 103 as 
being obvious over Smith in view of Harvey.

- Claims 3 - 10 are unpatentable under 35 U.S.C. 
103 as being obvious over Smith in view of Jones, 
and further in view of Cooper.

- Claims 3 - 10 are unpatentable under 35 U.S.C. 
103 as being obvious over Smith in view of Harvey, 
and further in view of Cooper.

Any failure to provide the required explanation for 
any document, combination, or claim will be identified 
in a “Notice of Failure to Comply with Ex ParteReexamination Request Filing Requirements” (see 
MPEP § 2227). If a requester receives such a notice 
that identifies one or more documents, combinations, 
or claims for which an explanation was not given, the 
requester has the option to respond by either:

(A)providing a separate explanation for each 
combination, document, and claim identified in the 
notice as lacking explanation; or

(B)explicitly withdrawing any document, combination, 
or claim for which reexamination was 
requested for which there is no explanation. Obviously, 
once this is done, requester need not provide an 
explanation for the withdrawn document, combination, 
or claim. Thus, for example, if the requester’s 
response to the notice explicitly withdraws the request 
as to claims 6-10, then the documents and their combinations 
need only be applied separately as to claims 
1-5 of the patent. Likewise, if the requester’s response 
to the notice explicitly withdraws the Jones patent 
from the request, then no explanation is required as to 
the Jones reference, and all combinations advanced in 
the request that contained Jones are deemed to be 
withdrawn.

Even if the request fails to comply with one of the 
above-identified requirements, the request may be 
accepted if it is readily understood from the explanation 
provided in the request as to how the cited patents 
or printed publications are applied to all claims which 
requester considers to merit reexamination. 




 

II.AFFIDAVITS/DECLARATIONS/OTHER 
WRITTEN EVIDENCE

Affidavits or declarations or other written evidence 
which explain the contents or pertinent dates 
of prior art patents or printed publications in more 
detail may be considered in reexamination. See MPEP 
§ 2258.



III.ADMISSIONS

The consideration under 35 U.S.C. 303 of a request 
for ex parte reexamination is limited to prior art patents 
and printed publications. See Ex parteMcGaughey, 6 
USPQ2d 1334, 1337 (Bd. Pat. App. & 
Inter. 1988). Thus an admission, per se, may not be 
the basis for establishing a substantial new question of 
patentability. However, an admission by the patent 
owner of record in the file or in a court record may be 
utilized in combination with a patent or printed publication.


For handling of admissions during the examination 
stage of a proceeding (i.e., after reexamination has 
been ordered), see MPEP § 2258.

The admission can reside in the patent file (made of 
record during the prosecution of the patent application) 
or may be presented during the pendency of the 
reexamination proceeding or in litigation. Admissions 
by the patent owner as to any matter affecting patentability 
may be utilized to determine the scope and 
content of the prior art in conjunction with patents 
and printed publications in a prior art rejection, 
whether such admissions result from patents or 
printed publications or from some other source. An 
admission relating to any prior art established in the 
record or in court may be used by the examiner in 
combination with patents or printed publications in a 
reexamination proceeding. The admission must stand 
on its own. Information supplementing or further 
defining the admission would be improper. 

Any admission submitted by the patent owner is 
proper. A third party, however, may not submit admissions 
of the patent owner made outside the record of 
the file or the court record. Such a submission would 
be outside the scope of reexamination.

==2218 Copies of Prior Art==

It is required that a copy of each patent or printed 
publication relied on or referred to in the request, be 
filed with the request (37 CFR 1.510(b)(3)). If the 
copy provided is not legible, or is such that its image 
scanned into the Image File Wrapper system (IFW) 
will not be legible, it is deemed to not have been provided. 
An exception is color photographs and like 
color submissions, which, if legible as presented, will 
be retained in an “artifact” file and used as such. If 
any of the documents are not in the English language, 
an English language translation of all necessary and 
pertinent parts is also required. See MPEP § 
609.04(a), subsection III. An English language summary 
or abstract of a non-English language document 
is usually not sufficient. There is no assurance that 
the Office will consider the non-English language 
patent or printed publication beyond the translation 
matter that is submitted.

It is also helpful to include copies of the prior art 
considered (via a 37 CFR 1.555 information disclosure 
statement – separate from the listing of the patents 
or printed publications relied upon as raising a 
substantial new question of patentability) during earlier 
prosecution of the patent for which reexamination 
is requested. The presence of both the old and the new 
prior art allows a comparison to be made to determine 
whether a substantial new question of patentability is 
indeed present. See MPEP § 2242.

Copies of parent applications should be submitted 
if the content of the parent application has a bearing 
on the alleged substantial new question of patentability; 
for example, if the patent is a continuation-in-part 
and the question of patentability relates to a rejection 
based on intervening prior art where support in the 
parent application is relevant. In re Ruscetta, 255 F. 
2d 687, 118 USPQ 101 (CCPA 1958).

==2219 Copy of Printed Patent==

The U.S. Patent and Trademark Office will prepare 
a separate file  for each reexamination request, 
which will become part of the patent file. In
order to provide a format which can be amended and 
used for printing, requesters are required under 37 
CFR 1.510(b)(4) to include a copy of the patent for 
which reexamination is requested, to serve as the 
specification for the reexamination proceeding. A 




 

copy of the patent for which reexamination is 
requested should be provided in a double column format. 
Thus, a full copy of the printed patent (including 
the front page) would be used to provide the abstract, 
drawings, specification, and claims of the patent 
for 
the reexamination request and the resulting reexamination 
proceeding. A copy of any disclaimer, certificate 
of correction, or reexamination certificate 
issued for the patent must also be included, so that a 
complete history of the patent is before the Office for 
consideration. A copy of any Federal Court decision, 
complaint in a pending civil action, or interference 
decision should also be submitted.

==2220 Certificate of Service==

If the requester is a person other than the patent 
owner, the owner of the patent must be served with a 
copy of the request in its entirety. The service should 
be made to the correspondence address as indicated in 
37 CFR 1.33(c). The third party requester must set 
forth on the certificate of service the name and 
address of the party served and the method of service. 
The certificate of service must be attached to the 
request submitted to the Office. Further, the copy of 
the request served on the patent owner must also 
include a copy of the certificate of service. If service 
was not possible, a duplicate copy of the request 
papers must be supplied to the Office together with an 
explanation of what effort was made to effect service, 
and why that effort was not successful.

The most recent address of the attorney or agent of 
record can be determined by checking the Office’s 
register (roster) of patent attorneys and agents maintained 
by the Office of Enrollment and Discipline pursuant 
to  
37 CFR 10.5 and 10.11(a). See MPEP § 
2266.03 regarding service on the requester and on the 
patent owner.

==2221 Amendments Included in Request by Patent Owner==

Under 37 CFR 1.510(e), a patent owner may 
include a proposed amendment with his or her 
request. Any such amendment must be in accordance 
with 37 CFR 1.530(d) through (j). See MPEP § 2250as to the format and requirements of an amendment 
in a reexamination proceeding. If an amendment is 
submitted to add claims to the patent being reexamined, 
then excess claims fees pursuant to 37 CFR 
1.20(c)(3) and (c)(4) may be applicable to the presentation 
of the added claims. See the discussion of 
excess claim fees in MPEP § 2250.03. Amendments 
may also be proposed by patent owners in a statement 
under 37 CFR 1.530(b) and (c) or during the actual ex 
parte reexamination prosecution (37 
CFR 1.550(b)). 
See also MPEP § 2234 and § 2250.

The request should be decided on the wording of 
the patent claims in effect at that time (without any 
proposed amendments). The decision on the request 
will be made on the basis of the patent claims as 
though the proposed amendment had not been presented. 
However, if the request for reexamination is 
granted, all subsequent reexamination prosecution 
and examination should be on the basis of the claims 
as amended. 

==2222 Address of Patent Owner==

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



(c)All notices, official letters, and other communications for 
the patent owner or owners in a reexamination proceeding will be 
directed to the attorney or agent of record (see § 1.32(b)) in the 
patent file at the address listed on the register of patent attorneys 
and agents maintained pursuant to §§ 11.5 and 11.11 of this subchapter, 
or, if no attorney or agent is of record, to the patent owner 
or owners at the address or addresses of record. Amendments and 
other papers filed in a reexamination proceeding on behalf 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 an attorney or agent 
of record in the patent file, or by a registered attorney or agent not 
of record who acts in a representative capacity under the provisions 
of § 1.34. Double correspondence with the patent owner or 
owners and the patent owner’s attorney or agent, or with more 
than one attorney or agent, will not be undertaken. If more than 
one attorney or agent is of record and a correspondence address 
has not been specified, correspondence will be held with the last 
attorney or agent made of record.



In 37 CFR 1.33(c), it is indicated which correspondence 
address is to be normally used to direct correspondence 
to the patent owner. In most instances, this 
will be the address of the first named, most recent 
attorney or agent of record in the patent file, at his or 
her current address. As a general rule, the attorney-client 
relationship terminates when the 
purpose for 
which the attorney was employed is accomplished; 
e.g., the issuance of a patent to the client. However, 




 

apart from the attorney-client relationship, the Office 
has, by regulation, 37 CFR 10.23(c)(8), made it the 
responsibility of every “practitioner,” by virtue of his/
her registration, “to inform a client or former client ... 
of correspondence received from the Office ... when 
the correspondence (i) could have a significant effect 
on a matter pending before the Office, (ii) is received 
by the practitioner on behalf of a client or former client, 
and (iii) is correspondence of which a reasonable 
practitioner would believe under the circumstances 
the client or former client should be notified.” 
(Emphasis added.) This responsibility of a practitioner 
to a former client manifestly is not eliminated by 
withdrawing as an attorney or agent of record. The 
practitioner if he/she so desires, can minimize the 
need for forwarding correspondence concerning 
issued patents by having the correspondence address 
changed after the patent issues if the correspondence 
address is the practitioner’s address, which frequently 
is the case where the practitioner is the attorney or 
agent of record.

Further, 37 CFR 10.23(c)(8) requires a practitioner 
to “timely notify the Office of an inability to notify a 
client or former client of correspondence received 
from the Office” (Emphasis added.) As the language 
of this requirement clearly indicates, the duty to notify 
the Office is a consequence, not of any attorney-client 
relationship, but rather arises by virtue of the practitioner’s 
status as a registered patent attorney or agent.

If the patent owner desires that a different attorney 
or agent receive correspondence, then a new power of 
attorney must be filed. Correspondence will continue 
to be sent to the attorney or agent of record in the 
patent file absent a revocation of the same by the 
patent owner. If the attorney or agent of record specifies 
a correspondence address to which correspondence 
is to be directed, such direction should be 
followed. However, since a change in the correspondence 
address does not withdraw a power of attorney, 
a change of the correspondence address by the patent 
owner does not prevent the correspondence from 
being directed to the attorney or agent of record in the 
patent file under 37 CFR 1.33(c).

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

Where a request for ex parte reexamination has 
been filed :

Mail Stop “Ex Parte Reexam”

Attn: Central Reexamination Unit

Commissioner for Patents

P.O. Box 1450 

Alexandria, VA 22313-1450

Where a request for inter partes reexamination has 
been filed :

Mail Stop “Inter Partes Reexam”

Attn: Central Reexamination Unit

Commissioner for Patents

P.O. Box 1450 

Alexandria, VA 22313-1450

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

Mail Stop Document Services

Director of the U.S. Patent and Trademark Office

P.O. Box 1450 

Alexandria, VA 22313-1450

It is strongly recommended that the Mail Stop 
information be placed in a prominent position on the 
first page of each paper being filed utilizing a sufficiently 
large font size that will direct attention to it.



See MPEP § 324 for establishing assignee’s right 
to take action when submitting a power of attorney.

==2223 Withdrawal of Attorney or Agent==

A request by an attorney or agent of record to withdraw 
from a patent will normally be approved only if 
at least 30 
days remain in any running period for 
response. See also MPEP § 402.06.

A sample form for a request by an attorney or agent 
of record to withdraw from a patent is set forth below.


==2224 Correspondence==

All requests for ex parte reexamination (original 
request papers) and all subsequent ex parte reexamination 
correspondence mailed to the U.S. Patent and 
Trademark Office via the U.S. Postal Service Mail, 
other than correspondence to the Office of the General 
Counsel pursuant to 37 CFR 1.1(a)(3) and 1.302(e), 
should be addressed:

Mail Stop “Ex ParteReexam”

Attn: Central Reexamination Unit

Commissioner for Patents

P.O. Box 1450

Alexandria, VA 22313-1450

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

Customer Service Window

Randolph Building

401 Dulany Street

Alexandria, VA 22314

Hand-carried correspondence and correspondence 
submitted by delivery service should also be marked 
“Mail Stop Ex Parte Reexam.” Whether the correspondence 
is mailed via the U.S. Postal Service mail 
or is hand-carried to the Office, it is strongly recommended 
that the Mail Stop information be placed in a 
prominent position on the first page of each paper 
being filed utilizing a sufficiently large font size that 
will direct attention to it.

A request for ex parte reexamination may not be 
sent by facsimile transmission (FAX). See 37 CFR 
1.6(d)(5). All subsequent ex parte reexamination correspondence, 
however, may be FAXed to:

Central Reexamination Unit

(571) 273-9900.

After the filing of the request for ex parte reexamination, 
any letters sent to the U.S. Patent and Trademark 
Office relating to the resulting ex partereexamination proceeding should identify the proceeding 
by the number of the patent undergoing reexamination, 
the reexamination request control number 
assigned, the art unit, and the name of the examiner. 
The certificate of mailing and transmission procedures 
(37 CFR 1.8) and “Express Mail” mailing 
procedure (37 CFR 1.10) may be used to file any 
paper in an ex parte reexamination proceeding.

Communications from the U.S. Patent and Trademark 
Office to the patent owner will be directed to the 
first named, most recent attorney or agent of record in 
the patent file at the current address on the Office’s 
register of patent attorneys and agents, or to the patent 
owner’s address if no attorney or agent is of record, 
37 CFR 1.33(c).

Amendments and other papers filed on behalf of 
patent owners must be signed by the patent owners, or 
the registered attorney or agent of record in the patent 
file, or any registered attorney or agent acting in a representative 
capacity under 37 CFR 1.34(a). See 
MPEP § 2213.

Double correspondence with the patent owners and 
the attorney or agent normally will not be undertaken 
by the Office.

Where no correspondence address is otherwise 
specified, correspondence will be with the most recent 
attorney or agent made of record by the patent owner.

Note MPEP § 2220 on certificate of service.

See MPEP § 2624 for correspondence in inter 
partes reexamination proceedings.

2225Untimely Paper Filed Prior to 
Order [R-5]

After filing of a request for ex parte reexamination, 
no papers directed to the merits of the reexamination 
other than (A) citations of patents or printed publications 
under 37 CFR 1.501 or 37 CFR 1.555, (B) 
another complete request under 37 
CFR 1.510 or 
37 
CFR 1.915, or (C) notifications pursuant to MPEP 
§ 2282, should be filed with the Office prior to the 
date of the decision on the request for reexamination. 
Any papers directed to the merits of the reexamination 
other than those under 37 CFR 1.501, 1.555 or 
1.915, or MPEP § 2282, filed prior to the decision on 
the request will be returned to the sender by the Central 
Reexamination Unit or Technology Center 
Director without consideration. A copy of the 
letter 
accompanying the returned papers will be made of 
record in the patent file. However, no copy of the 
returned papers will be retained by the Office. If the 
submission of 
the returned papers is appropriate later 
in the proceedings, they will be accepted by the Office 
at that time. See  
Patlex Corp. v. Mossinghoff, 771 
F.2d 480, 226 USPQ 
985, 989 (Fed. Cir. 1985); In re 
Knight, 217 USPQ 294 (Comm’r Pat. 1982) and In re 
Amp, 212 USPQ 826 (Comm’r Pat. 1981).

==2226 Initial Processing of Request for Ex Parte Reexamination==

The opening of all mail marked “Mail Stop Ex 
Parte Reexam,” and all initial clerical processing of 
requests for reexamination, will be performed by the 
reexamination preprocessing staff in the Office of 
Patent Legal Administration, Central Reexamination 
Unit.

==2227 Incomplete Request for Ex ParteReexamination==

37 CFR 1.510. Request for ex parte reexamination.
{{Ellipsis}}
(c)If the request does not include the fee for requesting ex 
parte reexamination required by paragraph (a) of this section and 
meet all the requirements by paragraph (b) of this section, then the 
person identified as requesting reexamination will be so notified 
and will generally be given an opportunity to complete the request 
within a specified time. Failure to comply with the notice will 
result in the ex parte reexamination request not being granted a 
filing date, and will result in placement of the request in the patent 
file as a citation if it complies with the requirements of § 1.501.

(d)The filing date of the request for ex parte reexamination 
is the date on which the request satisfies all the requirements of 
this section.





Request papers that fail to satisfy all the requirements 
of 37 CFR 1.510(a) and (b) are incomplete and 
will not be granted a filing date. 

OFFICE PROCEDURE WHERE THE REQUEST 
FAILS TO COMPLY WITH REQUIREMENTS 
FOR A FILING DATE

A.Discovery of Non-Compliance with Filing 
Date Requirement(s) Prior to Assigning a Filing 
Date

1.Notice of Failure to Comply with Reexamination 
Request Filing Requirement

The Central Reexamination Unit (CRU) Legal 
Instrument Examiner (LIE) and CRU Paralegal check 
the request for compliance with the reexamination filing 
date requirements. If it is determined that the 
request fails to meet one or more of the filing date 
requirements (see MPEP § 2214), the person identified 
as requesting reexamination will be so notified 
and will be given an opportunity to complete the 
requirements of the request within a specified time 
(generally 30 days). Form PTOL-2077, “Notice of 
Failure to Comply with Ex Parte Reexamination 
Request Filing Requirements,” is used to provide the 
notification for ex parte reexamination. If explanation 
is needed as to a non-compliance item, the box at the 
bottom of the form will be checked. An attachment 
will then be completed to specifically explain why the 
request does not comply. If there is a filing fee deficiency, 
a form, PTOL-2057, is completed and attached 
to form PTOL-2077.

2.Failure to Remedy Defect(s) in “Notice of 
Failure to Comply with Ex Parte Reexamination 
Request Filing Requirements” 

If after receiving a “Notice of Failure to Comply 
with Ex Parte Reexamination Request Filing Requirements,” 
the requester does not remedy the defects in 
the request papers that are pointed out, then the 
request papers will not be given a filing date, but a 
control number will be assigned. Examples of a failure 
to remedy the defect(s) in the notice are (A) where 
the third party requester does not timely respond to 
the notice, and (B) where requester does respond, but 
the response does not cure the defect(s) identified to 
requester and/or introduces a new defect or deficiency.


If the third party requester timely responds to the 
“Notice of Failure to Comply with Ex Parte Reexamination 
Request Filing Requirements,” the CRU LIE 
and CRU Paralegal will check the request, as supplemented 
by the response, for correction of all non-
compliance items identified in the notice. If any identified 
non-compliance item has not been corrected, a 
filing date will not be assigned to the request papers. 
It is to be noted that a single failure to comply with 
the “Notice of Failure to Comply with Ex Parte Reexamination 
Request Filing Requirements” will ordinarily 
result in the reexamination request not being 
granted a filing date. 37 CFR 1.510(c) provides that 
“[f]ailure to comply with the notice may result in the 
ex parte reexamination request not being granted a filing 
date.” Thus, absent extraordinary circumstances, 
requester will be given only one opportunity to correct 
the non-compliance. Similarly, if the response 
introduces a new defect or deficiency into the request 
papers, the ex parte reexamination request will not be 
granted a filing date absent extraordinary circumstances. 
See discussion in item 3 below.

If the request papers are not made filing-date-compliant 
in response to the Office’s “Notice of Failure to 
Comply with Ex Parte Reexamination Request Filing 
Requirements,” the CRU LIE will prepare a “Notice 
of Disposition of Ex Parte Reexamination Request,” 
form PTOL-2079, identifying what defects have not 
been corrected.

B.Non-Compliance with Filing Date Requirement(
s) Discovered After Initial Issuance of 
Notice of Reexamination Request Filing Date

1.Decision Vacating Filing Date

After a filing date and control number are assigned 
to the request papers, the examiner reviews the 
request to decide whether to grant or deny it. If, in the 
process of reviewing the request, the examiner notes a 
non-compliance item not earlier recognized, the 
examiner will forward a memo to his/her SPRE 
detailing any such non-compliance item(s); a “cc” of 
the e-mail is provided to the Director of the CRU and 
to a Senior Legal Advisor in the Office of Patent 
Legal Administration (OPLA) overseeing reexamination. 
The SPRE will screen the memo and discuss the 
case with an appropriate OPLA Legal Advisor. Upon 
confirmation of the existence of any such non-compliant 
item(s), OPLA will issue a decision vacating the 
assigned reexamination filing date. In OPLA’s decision, 
the requester will be notified of the non-compliant 
item(s) and given time to correct the non-
compliance. As noted above, 37 CFR 1.510(c) provides 
that “[f]ailure to comply with the notice may 
result in the ex parte reexamination request not being 
granted a filing date.” Thus, absent extraordinary circumstances, 
requester will only be given one opportunity 
to correct the non-compliant item(s) identified in 
the Decision Vacating Filing Date. This category also 
includes instances where the Office becomes aware of 
a check returned for insufficient fund or a stopped 
payment of a check after a filing date has been 
assigned, and prior to the decision on the request for 
reexamination.

2.Failure to Remedy Defect in Decision Vacating 
Filing Date

If the third party requester does not timely respond 
to the Office’s notice, the CRU LIE will so inform a 
Senior Legal Advisor in the OPLA overseeing reexamination, 
and OPLA will issue a Decision Vacating 
the Proceeding.

If the requester timely responds to the Decision 
Vacating Filing Date, but the response fails to satisfy 
all the non-compliance items identified in the decision 
or introduces a new defect into the request papers, the 
examiner will prepare a memo to that effect. In the 
memo, the examiner will point out why the defect(s) 
have not been appropriately dealt with, and whether 
the non-compliant request papers qualify as a 37 CFR 
1.501 submission or not (and why). The examiner will 
forward the memo to his/her SPRE; a “cc” of the 
memo is provided to the Director of the CRU and to a 
Senior Legal Advisor in the OPLA overseeing reexamination. 
The SPRE will screen the memo and discuss 
the case with an appropriate OPLA Legal 
Advisor. Where the defects are not remedied or a new 
defect has been added, OPLA will issue a Decision 
Vacating the Proceeding.

The Decision Vacating the Proceeding will identify 
the items that do not comply with the filing date 
requirements which were not rectified, or are newly 
added, using the content of the examiner’s memo to 
explain why the defects are present. The decision will 
also point out the disposition of the request papers 
(treated as a 37 CFR 1.501 submission or discarded) 
and why. 






 

==2229 Notice of Request for Ex ParteReexamination in Official Gazette==



Notice of filing of all complete ex parte reexamination 
requests will be published in the Official Gazette, 
approximately 4 - 5 weeks after filing.

Both reexamination requests that have been 
assigned a filing date and Director-initiated orders to 
reexamine made without a request will be announced 
in the Official Gazette. The reexamination preprocessing 
staff of the Central Reexamination Unit (CRU) 
will complete a form with the information needed to 
print the notice. The forms are forwarded at the end of 
each week to the Office of Publications for printing in 
the Official Gazette.

In addition, a record of requests filed will be 
located in the Patent Search Room and in the reexamination 
preprocessing area of the CRU. Office personnel 
may use the PALM system to determine if a 
request for reexamination has been filed in a particular 
patent. The Official Gazette notice will appear in 
the notice section of the Official Gazette under the 
heading of Requests for Ex Parte ReexaminationFiled and will include the name of any requestor 
along with the other items set forth in 37 CFR 
1.11(c). 

==2230Constructive Notice to Patent Owner==

In some instances, it may not be possible to deliver 
mail to the patent owner because no current address is 
available. If all efforts to correspond with the patent 
owner fail, the reexamination proceeding will proceed 
without actual notice to the patent owner. The publication 
in the Official Gazette of ( A) the notice of 
the filing of a request for reexamination, or ( B) 
the notice of the ordering of reexamination at the 
initiative of the Director of the Office, will serve 
as constructive notice to the patent owner in such an 
instance.


==2231 Processing of Request Corrections==

All processing of submissions to cure an 
incomplete request for ex parte reexamination (see 
MPEP § 2227) is carried out in the preprocessing area 
of the Central Reexamination Unit (CRU). Any such 
submission should be marked “Mail Stop Ex ParteReexam” in the manner discussed in MPEP § 2224 so 
that the submission may be promptly forwarded to the 
reexamination preprocessing staff of the CRU.

==2232 Public Access==

Reexamination files are open to inspection by the 
general public by way of the Public PAIR via the 
USPTO Internet site. In viewing the images of the 
reexamination proceedings, members of the public 
will be able to view the entire content of the reexamination 
file. To access Public PAIR, a member of the 
public would (A) go to the USPTO web site at http://
www.uspto.gov, (B) click on the “Site Index” 
link, (C) click on the letter “E” in the index, (D) click 
on the link to the Electronic Business Center, (E) in 
the “Patents” column, click on the “? Status & View 
Documents” link, (F) under “Patent Application 
Information Retrieval” in the “Select Search Method” 
box, change the item to “Control Number,” (G) enter 
the control number of the reexamination proceeding 
in the “Enter Number” box, and (H) click on “Submit.”


If a copy of the reexamination file is requested, it 
may be ordered from the Document Services Division 
of the Office of Public Records (OPR). Orders for 
such copies must indicate the control number of the 
reexamination proceeding. Orders should be 
addressed as follows:

Mail Stop Document Services

Director of the U.S. Patent & Trademark Office

P.O. Box 1450

Alexandria, VA 22313-1450

Requests for a copy of a request may also be sent 
via e-mail to: dsd@uspto.gov, and the cost of the copy 
may be charged to a credit card or deposit account. 
Alternatively, a copy may be obtained from IFW via 
PAIR.

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




 

===2232.01 Determining if a Reexamination Was Filed for a Patent===

TO DETERMINE FROM PAIR OR PALM IF A 
REEXAMINATION REQUEST HAS BEEN 
FILED FOR A GIVEN PATENT NUMBER

Both the Internet and the USPTO Intranet can be 
accessed to determine if a reexamination request has 
been filed for a particular patent.

A. Using the Internet

- Log on to the Internet.

- Go to USPTO Website located at http://www.uspto.gov.

- Click on the “Site Index” link. 

- Click on the letter “E” in the index.

- Click on the link to the Electronic Business 
Center.

- Click on the “? Status & View Documents” 
link.

- Under “Patent Application Information Retrieval” 
in the “Select Search Method” box, change 
the item to “Patent Number” and enter the patent 
number (e.g., 5806063 – no commas are to be inserted) 
in the “Enter Number” box.

- Click on “Submit.”

- Click the “Continuity Data” button.

- Scroll to “Child Continuity Data” where any 
related reexamination will be listed. Ex parte reexaminations 
are identified by the unique “90” series code, 
e.g., 90/005,727. Inter partes reexaminations are 
identified by the unique “95” series code, e.g., 95/
000,001.

- Clicking on the underlined (hyperlinked) reexamination 
number will reveal the “Contents” for the 
reexamination file.

B.Using the USPTO Intranet

- From the USPTO Intranet site http://ptoweb/ptointranet/index.htm, Office personnel can click on 
“PALM” and then “General Information” which 
opens the PALM INTRANET General Information 
Display.

- From here, enter the patent number in the box 
labeled Patent #.

- Click on “Search” and when the “Patent Number 
Information” appears, click on “Continuity Data” 
to obtain the reexamination number.

 Any reexamination for the patent number will be 
listed.

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

==2233 Processing in Central Reexamination Unit and Technology Center==

 The working groups in the Central Reexamination 
Unit (CRU) or Technology Centers (TCs) have 
designated the legal instrument examiners to act as 
reexamination clerks, as part of their assigned duties, 
and thus to perform those clerical duties and responsibilities 
in the groups which are unique to reexamination. 
The CRU and TC Special Program Examiners 
(SPREs) and Paralegal Specialists have the responsibility 
to oversee clerical processing and serve as a 
resource for questions.

I.FEES

Under reexamination, there are fees for the request 
(37 CFR 1.20(c)(1)), for addition of claims (excess 
claims fees under 37 CFR 1.20(c)(3) and (c)(4)), for 
an extension of time under 37 CFR 1.550(c), and for 
any appeal, brief, and oral hearing fees under 37 CFR 
41.20(b). No fee is required for issue of the reexamination 
certificate. 

Any petitions filed under 37 CFR 1.137 or 37 CFR 
1.182 or 1.183 relating to a reexamination proceeding 
require fees (37 
CFR 1.17(f), (l) and (m)). 

Small entity reductions are available to the patent 
owner for the 37 CFR 1.137 petition fee, excess 
claim fees, appeal, brief, and oral hearing fees. Small 
entity reductions in fees are not available for the reexamination 
filing fee, extension of time fees, nor for 
petition fees for petitions filed under 37 CFR 1.182and 1.183. 

When a fee is required in a merged proceeding (see 
MPEP § 2283 and § 2285), only a single fee is needed 
even though multiple copies of the submissions (one 
for each file) are required.




 

II. MAILING

A transmittal form with the requester’s address will 
be used to forward copies of Office actions (and any 
references cited in the Office actions) to the requester. 
Whenever an Office action is issued, a copy of this 
form will be made and attached to a copy of the Office 
action. The use of this form removes the need to 
retype the requester’s address each time a mailing is 
required. When the patent owner is the requester, no 
such form is needed.



==2234 Entry of Amendments==

37 CFR 1.121. Manner of making amendments in 
applications.



(j)Amendments in reexamination proceedings. Any proposed 
amendment to the description and claims in patents 
involved in reexamination proceedings must be made in accordance 
with § 1.530.



37 CFR 1.530. Statement by patent owner in ex parte 
reexamination; amendment by patent owner in ex parte or 
inter partes reexamination; inventorship change in ex parte 
or 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 directing that proposed 
specified changes be made to the patent specification, including 
the claims, or to the drawings. An amendment paper directing that 
proposed specified changes be made in a reexamination proceeding 
may be submitted as an accompaniment to a request filed by 
the patent owner in accordance with § 1.510(e), as part of a patent 
owner statement in accordance with paragraph (b) of this section, 
or, where permitted, during the prosecution of the reexamination 
proceeding pursuant to §
 
1.550(a) or § 1.937.

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

(2)Claims. An amendment paper must include the entire 
text of each patent claim which is being proposed to be changed 
by such amendment paper and of each new claim being proposed 
to be added by such amendment paper. For any claim changed by 
the amendment paper, a parenthetical expression “amended,” 
“twice amended,” etc., should follow the claim number. Each 
patent claim proposed to be changed and each proposed added 
claim must include markings pursuant to paragraph (f) of this section, 
except that a patent claim or proposed added claim should be 
canceled by a statement canceling the claim, without presentation 
of the text of the claim.

(3)Drawings. Any change to the patent drawings must be 
submitted as a sketch on a separate paper showing the proposed 
changes in red for approval by the examiner. Upon approval of the 
changes by the examiner, only new sheets of drawings including 
the changes and in compliance with § 1.84 must 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 surrounded by brackets and identified 
as “Canceled.” 

(4)The formal requirements for papers making up the 
reexamination proceeding other than those set forth in this section 
are set out in § 1.52.

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

(f)Changes shown by markings. Any changes relative to the 
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 reexamination proceeding 
must be enclosed in brackets; and

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

(g)Numbering of patent claims preserved. Patent claims 
may not be renumbered. The numbering of any claims added in 
the reexamination proceeding must follow the number of the highest 
numbered patent claim.

(h)Amendment of disclosure may be required. The disclosure 
must be amended, when required by the Office, to correct 
inaccuracies of description and definition, and to secure substantial 
correspondence between the claims, the remainder of the specification, 
and the drawings.

(i)Amendments made relative to patent. All amendments 
must be made relative to the patent specification, including the 
claims, and drawings, which are in effect as of the date of filing 
the request for reexamination.

(j)No enlargement of claim scope. No amendment may 
enlarge the scope of the claims of the patent or introduce new matter. 
No amendment may be proposed for entry in an expired 
patent. Moreover, no amendment, other than the cancellation of 
claims, will be incorporated into the patent by a certificate issued 
after the expiration of the patent.

(k)Amendments not effective until certificate. Although the 
Office actions will treat proposed amendments as though they 




 

have been entered, the proposed amendments will not be effective 
until the reexamination certificate is issued.



Amendments which comply with 37 CFR 1.530(d) 
through (j) (and are formally presented pursuant 
to 37 CFR 1.52(a) and (b), and contain all fees 
required by 37 CFR 1.20(c)) are entered in the reexamination 
file.

For an IFW reexamination file, the amendment will 
be entered as follows:

(A)The amendment paper is designated by consecutive 
letters of the alphabet (A, B, C, etc.);

(B)Each entry in the amendment paper will be 
blocked by two lines, and given a successive number 
(for amendment A, the numbers would be A1, A2, 
A3, etc.);

(C)A copy of the claims filed with the request 
(which should be the copy in the printed patent) and 
the patent pages containing paragraphs being revised 
will be printed from the IFW file history;

(D)A line will be drawn through any claim(s) or 
paragraph(s) amended with the substituted copy being 
indicated by the reference letter and number (e.g., A1, 
A2, A3) of the amendment paper;

(E)Canceled claim(s) or paragraph(s) which are 
part of the patent are surrounded by brackets (i.e., a 
bracket placed at the beginning and end of each canceled 
claim or paragraph of the patent). They are notlined through;

(F)The marked up copy of the claims filed with 
the request and the patent pages containing paragraphs 
being revised are scanned into the IFW file 
history;

(G)The marked up amendment document is 
scanned into the IFW file history.

For a reexamination file that is maintained in paper:

An amendment is given a Paper No. and is designated 
by consecutive letters of the alphabet (A, B, C, 
etc). The amendment will be entered by drawing a 
line in red ink through (A) any claim(s) or paragraph(
s) amended and (B) the claim(s) or paragraph(
s) canceled which are not part of the patent, and 
the substituted copy being indicated by reference letter. 
Canceled claim(s) or paragraph(s) which are part 
of the patent should not be lined through, but rather 
marked with brackets (i.e., a bracket placed at the 
beginning and end of each canceled claim or paragraph 
of the patent). Patent claims must not be renumbered, 
and the numbering of the claims added during 
reexamination must follow the number of the highest 
numbered patent claim.

ALL amendments in reexamination proceedings, 
including examiner’s amendments made at the time 
when the Notice of Intent to Issue Ex Parte Reexamination 
Certificate (NIRC) is prepared (37 CFR 
1.121(g) does not apply in reexamination proceedings), 
must be presented in the form of a full copy of 
the text of each claim which is amended and each 
paragraph of the description which is amended. In 
other words, the entire claim or paragraph must be 
presented for any amendment of the claim or paragraph.


If a portion of the text is amended more than once, 
each amendment should indicate ALL of the changes 
(insertions and deletions) in relation to the current text 
of the patent under reexamination.

Although amendments will be entered for purposes 
of examination, the amendments are not legally effective 
until the reexamination certificate is issued.

See MPEP § 2250 for manner of making amendments 
by patent owner and for examples of proper 
claim amendment format. For clerical handling of 
amendments, see MPEP § 2270. See also MPEP 
§ 2221 for amendments included in the request by the 
patent owner. For entry of amendments in a merged 
proceeding, see MPEP § 2283 and § 2285.

==2235 Record Systems==

PALM — MONITORING SYSTEMS

The Patent Application Locating and Monitoring 
(PALM) system is used to support the reexamination 
process. The sections below delineate PALM related 
activities.

(A)Reexamination File Data on PALM — The 
routine PALM retrieval transactions are used to obtain 
data on reexamination files. From the USPTO Intranet 
site http://ptoweb/ptointranet/index.htm, Office staff 
can click on “PALM” and then “General Information” 
which opens the PALM INTRANET General Information 
Display. From here, enter the patent number in 
the box labeled Patent #. Then click on “Search” and 
when the “Patent Number Information” appears, click 
on “Continuity Data” to obtain the reexamination 
number.




 

(B)Reexamination e-File — The papers of a 
reexamination proceeding may be viewed on IFW. 
PALM provides information for the reexamination 
proceeding as to the patent owner and requester, contents, 
status, and related Office proceedings (applications, 
patents and reexamination proceedings). Some 
of the data entry for reexamination in PALM is different 
from that of a regular patent application. There are 
also differences in the status codes – all reexamination 
proceedings have status codes in the “400” range 
(there are some in the “800” range for some inter 
partes documents and actions), while patent applications 
have status codes ranging from “020” to over 
“100.”

(C)Patent File Location Control for Patents Not 
Available on IFW, i.e., Available Only in Paper File 
— The movement of paper patent files related to 
requests for reexamination throughout the Office is 
monitored by the PALM system in the normal fashion. 
The patent file will be charged to the examiner 
assigned the reexamination file and will be kept in the 
examiner’s office until the proceeding is concluded. 
After the reexamination proceeding has been 
concluded, the patent file should be forwarded with 
the reexamination file to the Office of Patent Legal 
Administration for review (see MPEP § 2289) and 
then to the Office of Publications. The Office of Publications 
will forward the patent file  to the Record 
Room after printing of the certificate.

(D)Reporting Events to PALM — The PALM 
system is used to monitor major events that take place 
in processing reexamination proceedings. During initial 
processing all major pre-ex parte examination 
events are reported. During the ex parte phase, the 
mailing of examiner’s actions are reported as well as 
owner’s responses thereto. The  reexamination clerk 
is responsible for reporting these events using the 
reexamination icon and window initiated in the 
PALM EXPO program. The events that will be 
reported are as follows:

(1)Determination Mailed — Denial of request 
for reexamination.

(2)Determination Mailed — Grant of request 
for reexamination.

(3)Petition for reconsideration of determination 
received.

(4)Decision on petition mailed — Denied.

(5)Decision on petition mailed — Granted.

(6)Owner response to determination (owner’s 
statement) received.

(7)Requester response to determination 
(requester’s reply) received.

(8)The mailing of all examiner actions. 

(9)The receipt of owner’s responses to examiner’s 
actions and Office receipt date.

Each of these events, as well as additional events 
reported by the Reexamination Preprocessing Unit 
will be permanently recorded and displayed in the 
“Contents” portion of PALM. In addition, status representative 
of these events will also be displayed.

(E)Status Reports — Various weekly “tickler” 
reports can be generated for each area given the 
event reporting discussed above. The primary purpose 
of these computer outputs is to assure that reexaminations 
are, in fact, processed with “special dispatch.”

(1)PALM Reports — A number of automated 
reports generated from the PALM system are provided 
to the TCs at the beginning of each week. These 
reports serve to indicate to the TCs when certain 
deadlines are approaching. Each report is subdivided 
by  working group and lists the requests in control 
number sequence. The following reports have been 
identified.

(2)Requests Not Yet Received in CRU — 
This report serves to indicate to the CRU those 
requests assigned to it for which preprocessing has 
not been completed and which have not yet been 
received in the TC. This report provides an indicator 
of future workload as well as identifying potential, 
problem stragglers.

(3)Requests Not Yet Assigned to an Examiner— This report serves to highlight those requests 
which have not been assigned to an examiner by the 
6th week since their filing. Requests appearing on this 
report should be located and docketed immediately.

(4)Requests Which Should Be Taken Up for 
Determination — This report lists those requests 
which have been assigned to an examiner and in 
which no determination has been mailed and the 6th 
week since their filing is past. Requests on this report 
should be taken up for determination by the examiner.

(5)Requests for Which Determinations Should 
be Prepared — This report lists those requests 
which 
have 
been assigned to an examiner and in 
which no determination has been mailed and the 2nd 
month since their filing is past. Determinations for 




 

requests on this report should be in the final stages of 
preparation.

(6)Requests for Which Determinations 
Should Have Been Mailed — This report lists those 
requests which have been assigned to an examiner 
and in which no determination has been mailed and 
the 10th week since their filing is past. Determinations 
for requests on this report should be mailed 
immediately. 

(7)Overdue Determinations — This report 
lists those requests in which no determination has 
been mailed and the 3rd month since their filing is 
past. This report should always be zero.

(8)Overdue Petitions for Reconsideration of a 
Denial — This report lists those requests in which the 
determination denied reexamination and no petition 
has been received and 6 weeks have passed since the 
determination was mailed. Reexamination proceedings 
on this report should be concluded.

(9)Overdue Owner Responses to Determinations 
— This report lists those requests in which the 
determination ordered reexamination and the owner 
has not filed a response and 10 weeks have passed 
since the mailing of the determination. These requests 
should be taken up for immediate ex parte action by 
the examiner.

(10) Overdue Requester Responses to Statements 
— This report lists those requests in which a 
proper OWNER statement was received and NO 
requester reply has been received and 10 weeks have 
passed since the receipt of the owner response. These 
requests should be taken up for immediate action.

(11) Overdue First Ex Parte Actions — This 
report lists those requests in which reexamination has 
been ordered and a first action has not been mailed 
and 6 weeks have passed since the request became 
available for ex parte prosecution. These requests 
should be taken up for immediate action by the examiner.


(12) Overdue Action or Examiner’s Answer — 
This report lists those reexaminations which are up 
for second or subsequent action by the examiner and 
no such action has been mailed and 2 months have 
passed since the filing of an owner response to a previous 
action.

(13) Overdue Advisory Action — This report 
lists those reexaminations which are up for action by 
the examiner and no such action has been mailed and 
1 month has passed since the filing of an owner 
response to a previous final action.

(14) Overdue Owner Response — This report 
lists those requests in which there has been an action 
rendered and 4 months have passed without an owner 
response.

(15) Overdue Certificates — This report lists 
those requests in which a Notice of Intent to Issue Ex 
Parte Reexamination Certificate has been mailed and 
3 months have passed since its mailing and no issue 
date has been assigned.

(16) Requests With Prolonged Prosecution — 
This report lists pending requests which have not 
matured into a certificate and 15 months have passed 
since the date of filing.

Asterisk items require immediate action and follow-
up, if appropriate.

==2236 Assignment of Reexamination==

Reexamination requests should normally be 
assigned to the Central Reexamination Unit 
(CRU) art unit which examines the technology 
(Chemical, Electrical, Mechanical, etc.) in which the 
patent to be reexamined is currently classified as an 
original. In that art unit, the Special Program 
Examiner (SPRE) will assign the reexamination 
request to a primary examiner, other than the examiner 
who originally examined the patent application 
(see “Examiner Assignment Policy” below), who is 
most familiar with the claimed subject matter of the 
patent. When no such knowledgeable primary examiner 
is available, the reexamination may be assigned 
to an assistant examiner. In such an instance a primary 
examiner must sign all actions and take 
responsibility for all actions taken.

I.EXAMINER ASSIGNMENT POLICY

It is the policy of the Office that the the CRU 
SPRE will assign the reexamination request to an 
examiner different from the examiner(s) who examined 
the patent application. Thus, under normal circumstances, 
the reexamination request will not be 
assigned to a  primary examiner or assistant examiner 
who was involved in any part of the examination 
of the patent for which reexamination is requested 
(e.g., by preparing/signing an action), or was so 
involved in the examination of the parent of the 
patent. This would preclude assignment of the request 
to an examiner who was a conferee in an appeal conference 
or panel review conference in an earlier 
concluded examination of the patent (e.g., the application 
for patent, a reissue, or a prior concluded reexamination 
proceeding). The conferee is considered to 
have participated in preparing the Office action which 
is preceded by the conference.

Exceptions to this general policy include cases 
where the original examiner is the only examiner with 
adequate knowledge of the relevant technology to 
examine the case. In the unusual case where there is a 
need to assign the request to the original examiner, the 
assignment must be approved by the CRU
Director, and the fact that such approval was given by 
the CRU Director must be stated by the examiner 
in the decision on the request for reexamination.

It should be noted that while an examiner who 
examined an earlier concluded reexamination proceeding 
is generally excluded from assignment of a 
newly filed reexamination, if the earlier reexamination 
is still ongoing, the same examiner will be 
assigned the new reexamination.

Copending reissue and reexamination proceedings:

(A)When a reissue application is pending for a 
patent, and a reexamination request is filed for the 
same patent, the reexamination request is generally 
assigned to an examiner who did not examine the 
original patent application even though the examiner 
who examined the patent application is handling the 
reissue application. If the reexamination request is 
granted and the reissue and reexamination proceedings 
are later merged (see MPEP § 2285), the 
merged proceeding will be handled (upon return 
of the files from the Office of Patent Legal Administration 
(OPLA)) by the TC examiner who is handling 
the reissue application. However, if that examiner was 
involved in any part of the examination of the patent 
for which reexamination is requested (e.g., by preparing/
signing an action), or was so involved in the 
examination of the parent application of the patent, a 
different TC examiner will be assigned. Thus, the 
reissue application would be transferred (reassigned) 
from the originally assigned examiner. 

(B)When a reexamination proceeding is pending 
for a patent, and a reissue application is filed for the 
same patent:

(1)Where reexamination has already been 
ordered (granted) in the reexamination proceeding, 
OPLA should be notified  as promptly as possible 
after the reissue application reaches the TC, that 
the proceedings are ready for consideration of merger. 
If any of the reexamination file, the reissue application, 
and the patent file are paper files, they should be 
hand delivered to OPLA at the time of the  notification 
to OPLA. If the reissue and reexamination proceedings 
are merged by OPLA, the reissue 
application will generally be assigned in the TC 
having the reissue (upon return of the files from 
OPLA) to the TC examiner who would ordinarily 
handle the reissue application. However, if that examiner 
was involved in any part of the examination of 
patent for which reexamination is requested (e.g., by 
preparing/signing an action), or was so involved in the 
examination of the parent application of the patent, a 
different TC examiner will be assigned. If the reissue 
and reexamination proceedings are not merged by 
OPLA, the decision will provide guidance as to 
assignment of the reissue proceeding depending on 
the individual fact situation.

(2)If reexamination has not yet been ordered 
(granted) in the reexamination proceeding, the Office 
of the TC SPRE will ensure that the reissue 
application is not assigned nor acted on, and the decision 
on the reexamination request will be made. If 
reexamination is denied, the reexamination proceeding 
will be concluded pursuant to MPEP § 2294, and 
the reissue application assigned in accordance with 
MPEP § 1440. If reexamination is granted, the Office 
of the SPRE will await the filing of any statement 
under 37 CFR 1.530 and any reply under 37 CFR 
1.535, or the expiration of the time for same (see 
MPEP § 2249 – § 2251), and then the OPLA should 
be promptly notified  that the proceedings are ready 
for consideration of merger. If any of the reexamination 
file, the reissue application, and the patent file are 
paper files, they should be hand delivered to OPLA at 
the time of the  notification to OPLA. If the reissue 
and reexamination proceedings are merged by OPLA, 
the reissue application will generally be assigned in 
the TC having the reissue (upon return of the files 
from OPLA) to the TC examiner who ordinarily handle 
the reissue application. However, if that examiner 
was involved in any part of the examination of the 
patent for which reexamination is requested (e.g., by 




 

preparing/signing an action), or was so involved in the 
examination of the parent application of the patent, a 
different TC examiner will be assigned. If the reissue 
and reexamination proceedings are not merged by 
OPLA, the decision will provide guidance as to 
assignment of the reissue proceeding depending on 
the individual fact situation.

II.CONSEQUENCES OF INADVERTENT 
ASSIGNMENT TO AN “ORIGINAL EXAMINER”


Should a reexamination be inadvertently assigned 
to an “original examiner” (in a situation where the TC 
or CRU Director’s approval is not stated in the 
decision on the request), the patent owner or the third 
party requester who objects must promptly file a 
paper alerting the Office of this fact. Any request 
challenging the assignment of an examiner to the case 
must be made within two months of the first Office 
action or other Office communication indicating the 
examiner assignment, or reassignment will not be 
considered. Reassignment of the reexamination to a 
different examiner will be addressed on a case-by-
case basis. In no event will the assignment to the original 
examiner, by itself, be grounds for vacating any 
Office decision(s) or action(s) and “restarting” the 
reexamination.

A situation may arise where a party timely (i.e., 
within the two months noted above) files a paper 
alerting the Office to the assignment of a reexamination 
to the “original examiner,” but that paper does not 
have a right of entry under the rules. An example of 
this is where a third party requester becomes aware of 
the assignment to the “original examiner” via that 
examiner signing the order for reexamination, and the 
patent owner does not file a statement under 37 CFR 
1.530. In that situation, the third party requester cannot 
file a reply under 37 CFR 1.535, and thus has no 
way to present the paper directed to the examiner 
assignment (no right of entry under the rules). In situations 
where a paper directed to the examiner assignment 
has no right of entry under the rules, the Office 
may waive the rules to the extent that the paper 
directed to the examiner assignment will be entered 
and considered.

==2237 Transfer Procedure==

Although the number of reexamination requests 
which must be transferred should be very small, the 
following procedures have been established for an 
expeditious resolution of any such problems.

A reexamination request is normally assigned a 
Central Reexamination Unit (CRU) art unit which 
examines the technology (Chemical, Electrical, 
Mechanical, etc.) in which the patent to be reexamined 
is currently classified as an original. If the 
CRU Special Program Examiner (SPRE) (to 
whose art unit the reexamination has been assigned)
believes that the reexamination should be assigned to 
another art unit, he or she must obtain the consent of 
the CRU SPRE of the art unit to which a transfer 
is desired. Pursuant to 35 U.S.C. 305, all ex partereexamination proceedings must be conducted with 
special dispatch within the Office. This applies to the 
transfer of reexamination proceedings. Accordingly, 
the CRU SPRE to whose art unit the reexamination 
has been assigned should expeditiously make any 
request for transfer of a reexamination proceeding 
to the CRU SPRE of the art unit to which a transfer 
is desired (the “new” art unit). Further, the 
CRU SPRE to whose art unit the reexamination has 
been assigned should  hand-carry any paper patent 
file for the reexamination proceeding to the CRU 
SPRE of the art unit to which a transfer is desired. 
Any conflict which cannot be resolved by the 
SPREs will be resolved by the CRU Director.


If the “new” art unit accepts assignment of the reexamination 
request, the “new” CRU SPRE assigns 
the request to an examiner in that unit.

==2238 Time Reporting==

I.CLERICAL TIME REPORTING

Both the Program Management System (PMS) and 
Payroll systems now used to monitor clerical time 
have been modified to report reexamination activities. 
Time devoted to processing actual reexamination files 
in the Central Reexamination Unit (CRU) or Technology 
Centers (TCs) should be reported using the 
appropriate PMS Code and Project Code. It should be 
noted that all clerical time consumed by reexamination 
activities must be reported in the above manner. 




 

Such activities as supervision, copying, typing, and 
docketing should be included.

II.PROFESSIONAL TIME REPORTING

(A)Reexamination fees are based on full cost 
recovery and it is essential that all time expended on 
reexamination activities be reported accurately. Thus, 
directors, supervisory patent examiners (SPEs), examiners 
and members of the Board of Patent Appeals 
and Interferences should report time spent on ex partereexamination on their individual Time and Attendance 
Report using the following Project Codes:

119051 — Used to report all activities related to a 
specific reexamination proceeding up until the time ex 
parte prosecution is begun.

119052 — Used to report all activities related to a 
specific reexamination proceeding from the time it is 
taken up for first, ex parte, action until the issuance of 
a certificate takes place.

112084 — Used to report SPE review and training 
of examiners in the examination of reexamination 
cases.

112108 – Used to report conferee examiner’s 
panel review conference time in the reexamination 
proceeding.

Examiners and SPEs will use the above codes to 
report their time for reexamination activities on their 
Biweekly Time Worksheets.

Time reported using codes 119051 and 119052 
will also be reported in the Examiner Production System 
as “Other” time.

(B) Special Program Examiners and paralegals 
will use 1407-30 as the code to report their time for 
reexamination activities on the Biweekly Time Worksheet 
Paralegal/Special Program Examiner (PTO-690 
P/S).

==2239 Reexamination Ordered at the Director's Initiative==

37 CFR 1.520. Ex parte reexamination at the initiative of 
the Director.

 The Director, at any time during the period of enforceability of 
a patent, may determine whether or not a substantial new question 
of patentability is raised by patents or printed publications which 
have been discovered by the Director or which have been brought 
to the Director’s attention, even though no request for reexamination 
has been filed in accordance with § 1.510 or § 1.913. The 
Director may initiate ex parte reexamination without a request for 
reexamination pursuant to § 1.510 or §
 
1.913. Normally requests 
from outside the Office that the Director undertake reexamination 
on his own initiative will not be considered. Any determination to 
initiate ex parte reexamination under this section will become a 
part of the official file of the patent and will be mailed to the 
patent owner at the address as provided for in § 1.33(c).

The Director of the USPTO may initiate reexamination 
without a request being filed and without a fee 
being paid. Such reexamination may be ordered at any 
time during the period of enforceability of the patent.

A decision to order reexamination at the Director’s 
initiative is, however, rare. Only in compelling 
circumstances, after a review of all the facts concerning 
the patent, would such a decision be made. 
Authority to order reexamination at the Director’s initiative 
has been delegated to the Deputy Commissioner 
for Patent Examination Policy. A decision to 
order reexamination at the Director’s initiative may 
also be made by the Director of the USPTO, the Deputy 
Director or the Commissioner for Patents.

If an Office employee becomes aware of an unusual 
fact situation in a patent which he or she considers to 
clearly warrant reexamination, a memorandum setting 
forth these facts (including a proposed rejection of all 
appropriate claims) along with the patent file (paper 
or electronic) and any prior art patents or printed publications 
should be forwarded to the Office of Patent 
Legal Administration (OPLA) through the Central 
Reexamination Unit (CRU) or Technology Center 
(TC) supervisory chain of command. A disk having 
the memorandum in electronic format should be 
included with a paper copy of the memorandum.

If an order to reexamine is to be issued, the decision 
is prepared in the OPLA. The decision is signed by 
the Deputy Commissioner for Patent Examination 
Policy and mailed by the OPLA Central Reexamination 
Unit (CRU). The patent file is then forwarded to 
the CRU reexamination preprocessing staff for preparation 
of a reexamination file and Official Gazettenotice. Examination and prosecution will then proceed 
without further communication with anyone but 
the patent owner.



If the Deputy Commissioner for Patent Examination 
Policy refuses to issue an order for reexamination, 
no record of any consideration of the matter will 
be maintained in the patent file or anywhere else 
in the Office, and the patent owner will not be notified.





 

The Director of the USPTO will not normally consider 
requests to order reexamination at the Director’s 
initiative received from members of the public. If a 
member of the public desires reexamination of a 
patent, a request and fee should be filed in accordance 
with 37 CFR 1.510 or 37 CFR 1.915.

==2240 Decision on Request==

35 U.S.C. 303. Determination of issue by Director.

(a)Within three months following the filing of a request for 
reexamination under the provisions of section 302 of this title, the 
Director will determine whether a substantial new question of patentability 
affecting any claim of the patent concerned is raised by 
the request, with or without consideration of other patents or 
printed publications. On his own initiative, and any time, the 
Director may determine whether a substantial new question of 
patentability is raised by patents and publications discovered by 
him or cited under the provisions of section 301 of this title. The 
existence of a substantial new question of patentability is not precluded 
by the fact that a patent or printed publication was previously 
cited by or to the Office or considered by the Office.

(b)A record of the Director’s determination under subsection 
(a) of this section will be placed in the official file of the 
patent, and a copy promptly will be given or mailed to the owner 
of record of the patent and to the person requesting reexamination, 
if any.

(c)A determination by the Director pursuant to subsection 
(a) of this section that no substantial new question of patentability 
has been raised will be final and nonappealable. Upon such a 
determination, the Director may refund a portion of the reexamination 
fee required under section 302 of this title.

37 CFR 1.515. Determination of the request for ex parte 
reexamination.

(a)Within three months following the filing date of a request 
for an ex parte reexamination, an examiner will consider the 
request and determine whether or not a substantial new question 
of patentability affecting any claim of the patent is raised by the 
request and the prior art cited therein, with or without consideration 
of other patents or printed publications. The examiner’s 
determination will be 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 be mailed to the patent owner at the address as 
provided for in § 1.33(c) and to the person requesting reexamination.


(b)Where no substantial new question of patentability has 
been found, a refund of a portion of the fee for requesting ex partereexamination will be made to the requester in accordance with § 
1.26(c).

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

Before making a determination on the request for 
reexamination, the examiner must request a litigation 
computer search by the Scientific and Technical Information 
Center (STIC) to check if the patent has been, 
or is, involved in litigation. The “Litigation Review” 
box on the reexamination IFW file jacket form should 
be completed to indicate that the review was conducted 
and the results thereof. A copy of the STIC 
search and the reexamination file jacket form are 
scanned into the IFW reexamination file history. In 
the rare instance where the record of the reexamination 
proceeding or the STIC search indicates that 
additional information is desirable, guidance as to 
making an additional litigation search may be 
obtained from the library of the Office of the Solicitor. 
If the patent is or was involved in litigation, and a 
paper referring to the court proceeding has been filed, 
reference to the paper by number should be made in 
the “Litigation Review” box on the reexamination 
IFW file jacket form as, for example, “litigation; see 
paper filed 7-14-2005. If a litigation records search is 
already noted on the file, the examiner need not repeat 
or update it.

If litigation has concluded or is taking place in the 
patent on which a request for reexamination has been 
filed, the request must be promptly brought to the 
attention of the Central Reexamination Unit 
(CRU) Special Program Examiner, who should 
review the decision on the request and any examiner’s 
action to ensure that it conforms to the current Office 
litigation policy and guidelines. See MPEP § 2286.

35 U.S.C. 303 requires that within 3 months following 
the filing of a request for reexamination, the 
Director of the USPTO will determine whether or not 
the request raises a “substantial new question of patentability” 
affecting any claim of the patent of which 
reexamination is desired. See also MPEP § 2241. 
Such a determination may be made with or without 
consideration of other patents or printed publications 
in addition to those cited in the request. No input from 
the patent owner is considered prior to the determination, 
unless the patent owner filed the request. See 
Patlex Corp. v. Mossinghoff, 771 F.2d 480, 226 USPQ 
985 (Fed. Cir. 1985).

The patent claims in effect at the time of the determination 
will be the basis for deciding whether a substantial 
new question of patentability has been raised. 
37 CFR 1.515(a). Amendments which (1) have been 




 

presented with the request if by the patent owner, 
(2)
 
have been filed in a pending reexamination proceeding 
in which the certificate has not been issued, 
or (3) have been submitted in a reissue application on 
which no reissue patent has been issued, will not be 
considered or commented upon when deciding 
requests.

The decision on the request for reexamination has 
as its object either the granting or denial of an order 
for reexamination. This decision is based on whether 
or not “a substantial new question of patentability” is 
found. A final determination as to unpatentability of 
the claims is not made in the decision; this determination 
will be made during the examination stage of the 
reexamination proceedings. Accordingly, no prima 
facie case of unpatentability need be found to grant an 
order for reexamination. If a decision to deny an order 
for reexamination is made, the requester may seek 
review by a petition under CFR 1.181. See 37 CFR 
1.515(c).

It is only necessary to establish that a substantial 
new question of patentability exists as to one of 
the patent claims in order to grant reexamination. The 
Office’s determination in both the order for reexamination 
and the examination stage of the reexamination 
will generally be limited solely to a review of the 
claim(s) for which reexamination was requested. If 
the requester was interested in having all of the claims 
reexamined, requester had the opportunity to include 
them in its request for reexamination. However, if the 
requester chose not to do so, those claim(s) for which 
reexamination was not requested will generally not be 
reexamined by the Office. It is further noted that 35 
U.S.C. 302 requires that “[t]he request must set forth 
the pertinency and manner of applying cited prior art 
to every claim for which reexamination is requested.” 
If the requester fails to apply the art to certain claims, 
then the requester is not statutorily entitled to reexamination 
of such claims. If a request fails to set forth the 
pertinency and manner of applying the cited art to any 
claim for which reexamination is requested as 
required by 37 CFR 1.510(b), that claim will generally 
not be reexamined. The decision to reexamine 
any claim for which reexamination has not been 
requested lies within the sole discretion of the Office, 
to be exercised based on the individual facts and situation 
of each individual case. If the Office chooses to 
reexamine any claim for which reexamination has not 
been requested, it is permitted to do so. In addition, 
the Office may always initiate a reexamination on its 
own initiative of the non-requested claim (35 U.S.C. 
303(a)). See Sony Computer Entertainment America 
Inc. v. Dudas, 2006 WL 1472462 (E.D. Va 2006).

One instance where reexamination was carried out 
only for the claims requested occurred in reexamination 
control numbers 95/000,093 and 95/000,094, 
where reexamination was requested for patent claims 
which were being litigated, but not for claims which 
were not being litigated. In that instance, the entirety 
of the reexamination was limited to the claims which 
were being litigated, for which reexamination was 
requested. The Office’s authority to carry out reexamination 
only for the claims for which reexamination 
was requested in reexamination control numbers 95/
000,093 and 95/000,094 was confirmed by the court 
in Sony, supra. See also MPEP § 2242 for the situation 
where there was a prior final federal court decision 
as to the invalidity/unenforceability of some of 
the claims, as another example of non-examination of 
some of the patent claims in a reexamination proceeding.


The decision on the request for reexamination 
should discuss all of the patent claims requested for 
reexaminaton. The examiner should limit the discussion 
of those claims in the order for reexamination as 
to whether a substantial new question of patentability 
has been raised. The examiner SHOULD NOT reject 
claims in the order for reexamination. Rather, any 
rejection of the claims will be made in the first Office 
action (on the patentability of the claims) that is 
issued after the expiration of the time for submitting 
any patent owner statement and requester reply that 
follow the examiner’s order.

The examiner should indicate, insofar as possible, 
his or her initial position on all the issues identified in 
the request or by the requester so that comment 
thereon may be received in the patent owner’s statement 
and in the requester’s reply. 

The Director of the USPTO has the authority to 
order reexamination only for a request which 
raise a substantial new question of patentability. The 
substantial new question of patentability requirement 
protects patentees from having to respond to, or participate 
in unjustified reexaminations. Patlex Corp. v. 
Mossinghoff, 771 F.2d 480, 226 USPQ 985 (Fed. Cir. 
1985).




 

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

Where a request for reexamination is filed on a 
patent after a reissue patent for that patent has already 
issued, reexamination will be denied, because the 
patent on which the request for reexamination is 
based has been surrendered. Should reexamination of 
the reissued patent be desired, a new request for reexamination, 
including and based on the specification 
and the claims of the reissue patent, must be filed. 
Where the reissue patent issues after the filing of a 
request for reexamination, see MPEP § 2285.

II.SECOND OR SUBSEQUENT REQUEST 
FILED DURING REEXAMINATION

If a second or subsequent request for ex parte reexamination 
is filed (by any party) while a first ex partereexamination is pending, the presence of a substantial 
new question of patentability depends on the prior 
art (patents and printed publications) cited by the second 
or subsequent requester. If the requester includes 
in the second or subsequent request prior art which 
raised a substantial new question in the pending reexamination, 
reexamination should be ordered only if 
the prior art cited raises a substantial new question of 
patentability which is different from that raised in 
the pending reexamination proceeding. If the prior art 
cited raises the same substantial new question of patentability 
as that raised in the pending reexamination 
proceedings, the second or subsequent request should 
be denied. 

Where the request raises a different substantial 
new question of patentability as to some patent 
claims, but not as to others, the request would be 
granted in part; see the order issued in reexamination 
control number 90/007,843 and 90/007,844.

The second or subsequent request for reexamination 
may raise a substantial new question of patentability 
with respect to any new or amended claim 
which has been proposed under 37 CFR 1.530(d) in 
the first (or prior) pending reexamination proceeding. 
The substantial new question may be directed to any 
proposed new or amended claim in the pending reexamination, 
to permit examination of the entire patent 
package. It would be a waste of resources to prevent 
addressing the proposed new or amended claims, by 
requiring parties to wait until the certificate issues for 
the proposed new or amended claims, and only then to 
file a new reexamination request challenging the 
claims as revised via the certificate. This also prevents 
a patent owner from simply amending all the claims 
in some nominal fashion to preclude a subsequent 
reexamination request during the pendency of the 
reexamination proceeding. In certain situations, 
after a grant of a second or subsequent request for ex 
parte reexamination, where (A) the patent owner files 
a petition under 37 CFR 1.182 as part of the statement 
or as the statement, and (B) it appears clear that the 
second or subsequent request was filed for purposes 
of harassment of the patent owner, if the petition is 
granted, prosecution on the second or subsequent 
reexamination would be suspended. Merger of such a 
second or subsequent request with the already pending 
reexamination proceeding(s) would unduly prolong 
the conclusion of the pending reexamination and 
be inconsistent with the requirement that reexamination 
proceeding be conducted with special dispatch. If 
the second or subsequent requester does not include 
the prior art which raised a substantial new question 
of patentability in the pending reexamination, reexamination 
may or may not be ordered depending on 
whether the different prior art raises a substantial new 
question of patentability. The second or subsequent 
request should be determined on its own merits without 
reference to the pending reexamination.

For cases in which a first ex parte reexamination is 
pending at the time a second or subsequent request for 
ex parte reexamination is to be decided, see MPEP 
§ 2283.

For cases in which either the first or subsequent 
request for reexamination, or both, is/are an inter 
partes reexamination proceeding, see MPEP § 2640and § 2686.01.

==2241 Time for Deciding Request==

The determination of whether or not to reexamine 
must be made within 3 months following the filing 
date of a request. See 35 U.S.C. 303(a) and 37 CFR 
1.515(a). If the 3-month period ends on a Saturday, 
Sunday, or Federal holiday within the District of 
Columbia, then the determination must be mailed by 
the preceding business day. The examiner should 
take up a request for decision about 6 weeks after the 
request was filed. The decision should be mailed 
within 10 weeks of the filing date of the request. 




 

When reexamination for the same patent has already 
been ordered based on an earlier request and that 
reexamination is pending, the examiner should immediately 
take up the new request for decision, i.e., there 
should be no delay of 6 weeks. See the last portion of 
MPEP § 2240 and also see MPEP § 2283 for multiple 
copending reexamination proceedings. A determination 
to reexamine may be made at any time during the 
period of enforceability of a patent.

==2242 Criteria for Deciding Request==

I.SUBSTANTIAL NEW QUESTION OF PATENTABILITY

The presence or absence of “a substantial new 
question of patentability” determines whether or not 
reexamination is ordered. The meaning and scope of 
the term “a substantial new question of patentability” 
is not defined in the statute and must be developed to 
some extent on a case-by-case basis, using the case 
law to provide guidance as will be discussed in this 
section. 

If the prior art patents and printed publications raise 
a substantial question of patentability of at least one 
claim of the patent, then a substantial new question of 
patentability is present, unless the same question of 
patentability has already been decided by (A) a final 
holding of invalidity, after all appeals, or (B) by the 
Office in a previous examination or pending reexamination 
of the patent. A “previous examination” of the 
patent is: (A) the original examination of the application 
which matured into the patent; (B) the examination 
of the patent in a reissue application that has 
resulted in a reissue of the patent; or (C) the examination 
of the patent in an earlier pending or concluded 
reexamination. The answer to the question of 
whether a “substantial new question of patentability” 
exists, and therefore whether reexamination may be 
had, is decided by the Director of the USPTO, and, as 
35 
U.S.C. 303 provides, that determination is final, 
i.e., not subject to appeal on the merits of the decision. 
See In re Etter, 756 F.2d 852, 225 USPQ 1 (Fed. Cir. 
1985). But see Heinl v. Godici, 143 F.Supp.2d 593, 
596-98 (E.D.Va. 2001) (35 U.S.C. 303 addresses only 
USPTO decisions to deny a request for reexamination 
and does not bar review of ultra vires USPTO decisions 
to grant reexamination requests. However, a 
decision to grant a reexamination request is not a final 
agency decision and is not ordinarily subject to judicial 
review.).

A prior art patent or printed publication raises a 
substantial question of patentability where there is a 
substantial likelihood that a reasonable examiner 
would consider the prior art patent or printed publication 
important in deciding whether or not the claim is 
patentable. If the prior art patents and/or publications 
would be considered important, then the examiner 
should find “a substantial new question of patentability” 
unless the same question of patentability has 
already been decided as to the claim in a final holding 
of invalidity by the Federal court system or by the 
Office in a previous examination. For example, the 
same question of patentability may have already been 
decided by the Office where the examiner finds the 
additional (newly provided) prior art patents or 
printed publications are merely cumulative to similar 
prior art already fully considered by the Office in a 
previous examination of the claim. 

For “a substantial new question of patentability” to 
be present, it is only necessary that: (A) the prior art 
patents and/or printed publications raise a substantial 
question of patentability regarding at least one claim, 
i.e., the teaching of the (prior art) patents and printed 
publications is such that a reasonable examiner would 
consider the teaching to be important in deciding 
whether or not the claim is patentable; and (B) the 
same question of patentability as to the claim has not 
been decided by the Office in a previous examination 
or pending reexamination of the patent or in a final 
holding of invalidity by the Federal Courts in a decision 
on the merits involving the claim. It is not necessary 
that a “prima facie” case of unpatentability exist 
as to the claim in order for “a substantial new question 
of patentability” to be present as to the claim. Thus, “a 
substantial new question of patentability” as to a 
patent claim could be present even if the examiner 
would not necessarily reject the claim as either fully 
anticipated by, or obvious in view of, the prior art patents 
or printed publications. As to the importance of 
the difference between “a substantial new question of 
patentability” and a “prima facie” case of unpatentability 
see generally In re Etter, 756 F.2d 852, 857 n.5, 
225 
USPQ 1, 4 n.5 (Fed. Cir. 1985). 

Where a request for reexamination of a patent is 
made before the conclusion of an earlier filed reexam
ination proceeding pending (ongoing) for that patent, 
the substantial new question of patentability may be 
raised with respect to any new or amended claim 
which has been proposed under 37 CFR 1.530(d) in 
the pending reexamination proceeding. The substantial 
new question may be directed to any proposed 
new or amended claim in the pending reexamination, 
to permit examination of the entire patent package. It 
would be a waste of resources to prevent addressing 
the proposed new or amended claims, by requiring 
parties to wait until the certificate issues for the proposed 
new or amended claims, and only then to file a 
new reexamination request challenging the claims as 
revised via the certificate. This also prevents a patent 
owner from simply amending all the claims in some 
nominal fashion to preclude a subsequent reexamination 
request during the pendency of the reexamination 
proceeding.

II.POLICY IN SPECIFIC SITUATIONS

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

A.Prior Favorable Decisions by the U.S. Patent 
and Trademark Office (Office) on the Same or 
Substantially Identical Prior Art in Relation to 
the Same Patent. 

A “substantial new question of patentability” is notraised by prior art presented in a reexamination 
request if the Office has previously considered (in an 
earlier examination of the patent) the same question 
of patentability as to a patent claim favorable to the 
patent owner based on the same prior art patents or 
printed publications. In re Recreative Technologies, 
83 F.3d 1394, 38 USPQ2d 1776 (Fed. Cir. 1996). 

In deciding whether to grant a request for reexamination 
of a patent, the examiner should check the 
patent’s file history to ascertain whether any of the 
prior art now advanced by requester was previously 
cited/considered in an earlier  Office examination of 
the patent (e.g., in the examination of the application 
for the patent, or in a concluded or pending reexamination 
proceeding). For the sake of expediency, such 
art is referred to as “old art” throughout, since the 
term “old art” was coined by the Federal Circuit in its 
decision of In re Hiniker, 150 F.3d 1362,1365-66, 
47 
USPQ2d 1523, 1526 (Fed. Cir. 1998).

In a decision to order reexamination made on or 
after November 2, 2002, reliance on old art does not 
necessarily preclude the existence of a substantial new 
question of patentability (SNQ) that is based exclusively 
on that old art. See Public Law 107-273, 116 
Stat. 1758, 1899-1906 (2002), which expanded the 
scope of what qualifies for a substantial new question 
of patentability upon which a reexamination may be 
based. Determinations on whether a SNQ exists in 
such an instance shall be based upon a fact-specific 
inquiry done on a case-by-case basis. For example, a 
SNQ may be based solely on old art where the old art 
is being presented/viewed in a new light, or in a different 
way, as compared with its use in the earlier concluded 
examination(s), in view of a material new 
argument or interpretation presented in the request.

 When it is determined that a SNQ based solely on 
old art is raised, form paragraph 22.01.01 should be 
included in the order for reexamination.


See MPEP § 2258.01 for a discussion of the use of 
“old art” in the examination stage of an ordered reexamination 
(as a basis for rejecting the patent claims).

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

A prior decision adverse to the patentability of a 
claim of a patent by the Office based upon prior art 
patents or printed publications would usually mean 
that “a substantially new question of patentability” is 
present. Such an adverse decision by the Office could, 
for example, arise from a reissue application which 
was abandoned after rejection of the claim and without 
disclaiming the patent claim.

C.Prior Adverse Reissue Application Final Decision 
by the Director of the USPTO or the 
Board of Patent Appeals and Interferences 
Based Upon Grounds Other Than Patents or 
Printed Publications.

Any prior adverse final decision by the Director of 
the USPTO or the Board of Patent Appeals and Interferences, 
on an application seeking to reissue the 
same patent on which reexamination is requested will 
be considered by the examiner when determining 
whether or not a “substantial new question of patentability” 
is present. To the extent that such prior 
adverse final decision was based upon grounds other 
than patents or printed publications, the prior adverse 
final decision will not be a basis for determining 
whether or not a “substantial new question of patentability” 
is present. 

D.Prior Favorable or Adverse Decisions on the 
Same or Substantially Identical Prior Art Patents 
or Printed Publications in Other Cases 
not Involving the Patent.

While the Office would consider decisions involving 
substantially identical patents or printed publications 
in determining whether a “substantial new 
question of patentability” is raised, the weight to be 
given such decisions will depend upon the circumstances. 


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

A.Final Holding of Validity by the Courts.

When the initial question as to whether the prior art 
raises a substantial new question of patentability as to 
a patent claim is under consideration, the existence of 
a final court decision of claim validity in view of the 
same or different prior art does not necessarily mean 
that no new question is present, because of the different 
standards of proof employed by the Federal District 
Courts and the Office. While the Office may 
accord deference to factual findings made by the district 
court, the determination of whether a substantial 
new question of patentability exists will be made 
independently of the court’s decision on validity, 
because it is not controlling on the Office.

B.Nonfinal Holding of Invalidity or Unenforceability 
by the Courts.

A nonfinal holding of claim invalidity or unenforceability 
will not be controlling on the question of 
whether a substantial new question of patentability is 
present. 

C.Final Holding of Invalidity or Unenforceability 
by the Courts.

A final holding of claim invalidity or unenforceability, 
after all appeals, is controlling on the Office. 
In such cases, a substantial new question of patent





 

ability would not be present as to the claims finally 
held invalid or unenforceable. 

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

Any situations requiring clarification should be 
brought to the attention of the Office of Patent Legal 
Administration.

==2243 Claims Considered in Deciding Request==

The claims in effect at the time of the determination 
will be the basis for deciding whether “a substantial 
new question of patentability” is present. 37 CFR 
1.515(a). The Office’s determination in both the 
order for reexamination and the examination stage of 
the reexamination will generally be limited solely to a 
review of the claim(s) for which reexamination was 
requested. If the requester was interested in having all 
of the claims reexamined, requester had the opportunity 
to include them in its request for reexamination. 
However, if the requester chose not to do so, those 
claim(s) for which reexamination was not requested 
will generally not be reexamined by the Office. It is 
further noted that 35 U.S.C. 302 requires that “[t]he 
request must set forth the pertinency and manner of 
applying cited prior art to every claim for which reexamination 
is requested.” If the requester fails to apply 
the art to certain claims, then the requester is not statutorily 
entitled to reexamination of such claims. If a 
request fails to set forth the pertinency and manner of 
applying the cited art to any claim for which reexamination 
is requested as required by 37 CFR 1.510(b), 
that claim will generally not be reexamined. The decision 
to reexamine any claim for which reexamination 
has not been requested lies within the sole discretion 
of the Office, to be exercised based on the individual 
facts and situation of each individual case. If the 
Office chooses to reexamine any claim for which 
reexamination has not been requested, it is permitted 
to do so. In addition, the Office may always initiate a 
reexamination on its own initiative of the non-
requested claim (35 U.S.C. 303(a)). Thus, while the 
examiner will ordinarily concentrate on those claims 
for which reexamination is requested, the finding of 
“a substantial new question of patentability” can be 
based upon a claim of the patent other than the ones 
for which reexamination is requested. For example, 
the request might seek reexamination of particular 
claims, but the examiner is not limited to those claims 
and can make a determination that “a substantial new 
question of patentability” is present as to other claims 
in the patent without necessarily finding “a substantial 
new question” with regard to the claims for which 
reexamination was requested.

The decision on the request for reexamination 
should discuss all of the patent claims requested for 
reexamination. The examiner should limit the discussion 
of those claims in the order for reexamination as 
to whether a substantial new question of patentability 
has been raised.

See MPEP § 2242 for a discussion of patent claims 
which have been the subject of a prior decision.

Amendments and/or new claims presented in any 
copending reexamination or reissue proceeding for 
the patent to be reexamined will generally (see MPEP 
§ 2240, subsection II.) not be considered nor commented 
upon when deciding a request for reexamination. 
Where a request for reexamination is granted and 
reexamination is ordered, the first Office action and 
any subsequent reexamination prosecution should be 
on the basis of the claims as amended by any copending 
reexamination or reissue proceeding.

==2244 Prior Art on Which the Determination Is Based==

The determination whether or not “a substantial 
new question of patentability” is present can be based 
upon any prior art patents or printed publications. 
35 U.S.C. 303(a) and 37 CFR 1.515(a) provide 
that the determination on a request will be made “with 
or without consideration of other patents or printed 
publications,” i.e., other than those relied upon in the 
request. The examiner is not limited in making the 
determination based on the patents and printed 
publications relied on in the request. The examiner 
can find “a substantial new question of patentability” 
based upon the prior art patents or printed publications 
relied on in the request, a combination of the 
prior art relied on in the request and other prior art 
found elsewhere, or based entirely on different patents 
or printed publications. The primary source of patents 
and printed publications used in making the determination 
are those relied on in the request. For reexamination 
ordered on or after November 2, 2002, see 
MPEP § 2242, subsection II.A. for a discussion of 
“old art.” The examiner can also consider any pat
ents and printed publications of record in the patent 
file from submissions under 37 
CFR 1.501 which are 
in compliance with 37 CFR 1.98 in making the determination. 
If the examiner believes that additional 
prior art patents and publications can be readily 
obtained by searching to supply any deficiencies in 
the prior art cited in the request, the examiner can perform 
such an additional search. Such a search should 
be limited to that area most likely to contain the deficiency 
of the prior art previously considered and 
should be made only where there is a reasonable likelihood 
that prior art can be found to supply any deficiency 
necessary to “a substantial new question of 
patentability.”

The determination should be made on the claims in 
effect at the time the decision is made (37 CFR 
1.515(a)).

The  Director of the USPTO has the authority 
to order reexamination only in those 
cases which raise 
a substantial new question of 
patentability. The substantial 
new question of patentability requirement protects 
patentees from having 
to respond to, or 
participate in unjustified reexaminations. See, e.g., 
Patlex Corp. v. Mossinghoff, 771 F.2d 480, 226 USPQ 
985 (Fed. Cir. 1985).

==2245 Processing of Decision==

After the examiner has prepared the decision and 
proofread and signed the typed version, the reexamination 
file and decision are given to the Central 
Reexamination Unit (CRU) Legal Instrument Examiner 
(LIE) for coordinating the clerical processing 
carried out by the technical support staff.

The technical support staff then prints the heading 
on the decision by using the computer terminal. If the 
request was made by a third party, the technical support 
staff makes copies for both the patent owner and 
the requester of any prior art documents not already 
supplied by or to the patent owner or requester. If the 
patent owner filed the request, only a patent owner 
copy is required.

A copy of the decision is then mailed to the patent 
owner and to any third party, along with any required 
copies of prior art documents. The original signed 
copy of the decision and a copy of any prior art 
enclosed is made of record in the reexamination electronic 
file (file history).

==2246 Decision Ordering Reexamination==

35 U.S.C. 304. Reexamination order by Director.

If, in a determination made under the provisions of subsection 
303(a) of this title, the Director finds that a substantial new question 
of patentability affecting any claim of a patent is raised, the 
determination will include an order for reexamination of the 
patent for resolution of the question. The patent owner will be 
given a reasonable period, not less than two months from the date 
a copy of the determination is given or mailed to him, within 
which he may file a statement on such question, including any 
amendment to his patent and new claim or claims he may wish to 
propose, for consideration in the reexamination. If the patent 
owner files such a statement, he promptly will serve a copy of it 
on the person who has requested reexamination under the provisions 
of section 302 of this title. Within a period of two months 
from the date of service, that person may file and have considered 
in the reexamination a reply to any statement filed by the patent 
owner. That person promptly will serve on the patent owner a 
copy of any reply filed.

37 CFR 1.525. Order for ex parte reexamination.

(a)If a substantial new question of patentability is found 
pursuant to § 1.515 or § 1.520, the determination will include an 
order for ex parte reexamination of the patent for resolution of the 
question. If the order for ex parte reexamination resulted from a 
petition pursuant to § 1.515(c), the ex parte reexamination will 
ordinarily be conducted by an examiner other than the examiner 
responsible for the initial determination under § 1.515(a).

(b)The notice published in the Official Gazette under 
§
 
1.11(c) will be considered to be constructive notice and ex partereexamination will proceed.

If a request for reexamination is granted, the examiner’s 
decision granting the request will conclude that 
a substantial new question of patentability has been 
raised by (A) identifying all claims and issues, (B) 
identifying the patents and/or printed publications 
relied on, and (C) providing a brief statement of the 
rationale supporting each new question. 

In the examiner’s decision, the examiner must identify 
at least one substantial new question of patentability 
and explain how the prior art patents and/or 
printed publications raise such a question. The examiner 
should indicate, insofar as possible, his or her initial 
position on all the issues identified in the request 
or by the requester (without rejecting claims) so that 
comment thereon may be received in the patent 
owner’s statement and in the requester’s reply. The 
prior art relied on should be listed on a form PTO-892 
if it is not already listed on a form  PTO/SB/08A or 
08B, or PTO/SB/42 (or on a form having a format 
equivalent to one of these forms) by the requester. A 
copy of a reference should be supplied only where it 
has not been previously supplied to the patent owner 
and requester.

As to each substantial new question of patentability 
identified in the decision, the decision should point 
out:

(A)The prior art patents and printed publications 
which add some new teaching as to at least one claim;

(B)What that new teaching is;

(C)The claims that the new teaching is directed 
to;

(D)That the new teaching was not previously 
considered nor addressed in the prior examination of 
the patent or a final holding of invalidity by the Federal 
Courts;

(E)That the new teaching is such that a reasonable 
examiner would consider the new teaching to be 
important in deciding to allow the claim being considered; 
and

(F)Where the question is raised, or where it is 
not clear that a patent or printed publication pre-dates 
the patent claims, a discussion should be provided as 
to why the patent or printed publication is deemed to 
be available against the patent claims.

See MPEP § 2247.01 for an example of a decision 
granting a request for reexamination.

In a simple case, the examiner may adopt the reasons 
provided by the requester in the discussion of the 
substantial new question of patentability. 

The example in MPEP § 2247.01 is drafted for the 
case where the “request indicates that Requester considers 
that Claims 1-3 are unpatentable over Smith 
taken with Jones.” There may, however, be a request 
that does not indicate the claims to be unpatentable 
over the art, but rather that a substantial new 
question of patentability is raised by the art. This may 
occur, for example, in a patent owner request filed to 
address prior art that raises a substantial new question 
of patentability but the claims are still patentable over 
the art. In such an instance, the decision on the 
request should not state that the “request indicates that 
Requester considers that Claims 1-3 are unpatentable 
over Smith taken with Jones.” Rather, it should state 
that the “request indicates that Requester considers 
that a substantial new question of patentability is 
raised as to Claims 1-3 based on Smith taken with 
Jones.”

In the decision on the request, the examiner will not 
decide, and no statement should be made as to, 
whether the claims are rejected over the patents and 
printed publications. The examiner does not decide on 
the question of patentability of the claims in the decision 
on the request. The examiner only decides 
whether there is a substantial new question of patentability 
to grant the request to order reexamination.

If arguments are raised by a requester (third party 
or patent owner) as to grounds not based on the patents 
or printed publications, such as those based on 
public use or sale, or abandonment under 35 
U.S.C. 
102(c), the examiner should note that such grounds 
are improper for reexamination and are not considered 
or commented upon. See 37 CFR 1.552(c).

The decision granting the request is made on a decision 
form and must set forth the time periods for the 
patent owner and requester to file their statement and 
any reply thereto.

I.PANEL REVIEW CONFERENCE

After an examiner has determined that the reexamination 
proceeding is ready for granting reexamination, 
the examiner will formulate a draft preliminary 
order granting reexamination. The examiner will then 
inform his/her Special Program Examiner (SPRE) of 
his/her intent to issue an order granting reexamination. 
The SPRE will convene a panel review conference, 
and the conference members will review the 
matter. See MPEP § 2271.01 for the make-up of the 
panel. If the conference confirms the examiner’s preliminary 
decision to grant reexamination, the proposed 
order granting reexamination shall be issued 
and signed by the examiner, with the two other conferees 
initialing the action (as “conferee”) to indicate 
their presence in the conference. If the conference 
does not confirm the examiner’s preliminary decision, 
the examiner will reevaluate and issue an appropriate 
communication.



II. PETITION TO VACATE THE ORDER 
GRANTING REEXAMINATION

A substantive determination by the Director of the 
USPTO to institute reexamination pursuant to a finding 
that the prior art patents or printed publications 
raise a substantial new 
question of patentability is not 
subject to review by the courts until a final agency 
decision in the reexamination proceeding has issued. 
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). 
Note further the decision of Patlex Corp. v. Quigg, 
680 F. Supp. 33, 35, 6 
USPQ2d 1296, 1298 (D.D.C. 
1988) (the legislative scheme leaves the Director’s 
35 
U.S.C. 303 determination entirely to his or her discretion 
and not subject to judicial review until a final 
agency decision on the reexamination proceeding has 
issued). Accordingly, neither the patent owner nor the 
requester has a right to petition, or request reconsideration 
of, a finding that prior art patents or printed publications 
raise a substantial new question after a 
request for reexamination is granted. There is no right 
to petition such a finding after a request for reexamination 
is granted even if the finding of a substantial 
new question is based on reasons other than those 
urged by the requester (or based on less than all the 
grounds urged by the requester). Where the examiner 
determines that a date of a reference is early enough 
such that the reference constitutes prior art, that determination 
is not petitionable (with respect to vacating 
the examiner’s finding of a substantial new question). 
Where the examiner determines that a reference is a 
printed publication (i.e., that the criteria for publication 
has been satisfied), that determination is also not 
petitionable. These matters cannot be questioned with 
respect to vacating the order granting reexamination 
until a final agency decision on the reexamination 
proceeding has issued. Rather, these matters can be 
argued by the patent owner and appealed during the 
examination phase of the reexamination proceeding.

A petition under 37 CFR 1.181 may, however, be 
filed to vacate an ultra vires reexamination order, 
such as where the order for reexamination is not based 
on prior art patents and printed publications. In cases 
where no discretion to grant a request for reexamination 
exists, a petition to vacate the decision to 
grant,
 
or a request for reconsideration, will be entertained. 
“Appropriate circumstances” under 37 CFR 
1.181(a)(3) exist to vacate the order granting reexamination 
where, for example: 

(A)the reexamination order is not based on prior 
art patents or printed publications;

(B)all claims of the patent were held to be invalid 
by a final decision of a Federal Court after all appeals;

(C)reexamination was ordered for the wrong 
patent;

(D)reexamination was ordered based on a duplicate 
copy of the request; or

(E)the reexamination order is based wholly on 
the same question of patentability raised by the prior 
art previously considered in an earlier concluded 
examination of the patent by the Office (e.g., the 
application which matured into the patent, a prior 
reexamination, an interference proceeding).

As to (E) above, the decision of In re Recreative 
Technologies Corp., 83 F.3d 1394, 38 USPQ2d 1776 




 

(Fed. Cir. 1996) is to be noted. See the discussion in 
MPEP § 2242 subsection II.A. as to the criteria for 
vacating a reexamination order in view of the decision.


When a petition under 37 CFR 1.181 is filed to 
vacate a reexamination order, the third party 
requester (where one is present in the reexamination 
proceeding) may file a single submission in opposition 
to the petition. Because reexamination proceedings 
are conducted with special dispatch, 35 U.S.C. 
305, any such opposition by the third party requester 
must be filed within two weeks of the date upon 
which a copy of the original 37 CFR 1.181 petition 
was served on the third party requester to ensure consideration. 
It is advisable that, upon receipt and 
review of the served copy of such a 37 CFR 1.181petition which the third party requester intends to 
oppose, the requester should immediately place a 
courtesy telephone call to both the Central Reexamination 
Unit (CRU) support staff and the Special 
Program Examiner in the CRU or Technology 
Center (TC) in which the reexamination proceeding 
is pending to notify the Office that an opposition to 
the 37 CFR 1.181 petition will be filed. Whenever 
possible, filing of the opposition should be submitted 
by facsimile transmission.

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

II.PRIOR ART SUBMITTED AFTER THE 
ORDER

Any prior art citations under 37 CFR 1.501 submitted 
after the date of the decision on the order should 
be retained in a separate file by the CRU or TC 
(usually the CRU or TC Special Program Examiner)
and stored until the reexamination proceeding is concluded, 
at which time the prior art citation is then 
entered of record on the patent file. See MPEP 
§ 2206.

==2247 Decision on Request for Reexamination, Request Denied==

The request for reexamination will be denied if a 
substantial new question of patentability is not found 
based on patents or printed publications.

If the examiner concludes that no substantial new 
question of patentability has been raised, the examiner 
should prepare a decision denying the reexamination 
request.
 Form paragraph 22.02 should be used as the 
introductory paragraph in a decision denying reexamination.


¶ 22.02 No New Question of Patentability

No substantial new question of patentability is raised by the 
request for reexamination and prior art cited therein for the reasons 
set forth below.

The decision denying the request will then indicate, 
for each patent and printed publication cited in the 
request, why the citation is:

(A)Cumulative to the teachings of the art cited in 
the earlier concluded examination of the patent;

(B)Not available against the claims (e.g., the reference 
is not available as prior art because of its date 
or the reference is not a publication);

(C)Not important to a reasonable examiner in 
deciding whether any claim of the patent for which 
reexamination is requested is patentable, even though 
the citation is not cumulative and the citation is available 
against the claim; or

(D)One which was cited in the record of the 
patent and is barred by the guidelines set forth in 
MPEP § 2242 subsection II. A.

The examiner should also, in the decision respond 
to the substance of each argument raised by the 
requester which is based on patents or printed publications. 
If arguments are presented as to grounds not 
based on prior art patents or printed publications, such 
as those based on public use or on sale under 35 
U.S.C. 102(b), or abandonment under 35 
U.S.C. 
102(c), the examiner should note that such grounds 
are improper for reexamination and are not considered 
or commented upon. See 37 CFR 1.552(c).

 See MPEP § 2247.01 for an example of a decision 
denying a request for reexamination. The example in 
MPEP § 2247.01 is drafted for the case where the 
“request indicates that Requester considers that 
Claims 1-2 are unpatentable over Smith taken with 
Jones.” There may, however, be a request that does 
not indicate the claims to be unpatentable over the 
art, but rather that a substantial new question of patentability 
is raised by the art. This may occur, for 
example, in a patent owner request filed to address 
prior art that raises a substantial new question of pat





 

entability but the claims are still patentable over the 
art. In such an instance, the decision on the request 
should not state that the “request indicates that 
Requester considers that Claims 1-2 are unpatentable 
over Smith taken with Jones.” Rather, it should state 
that the “request indicates that Requester considers 
that a substantial new question of patentability is 
raised as to Claims 1-2 based on Smith taken with 
Jones.”

The decision denying a request for reexamination is 
mailed, and jurisdiction over the reexamination proceeding 
is retained by the Central Reexamination 
Unit (CRU) to await any petition seeking review of 
the examiner’s determination refusing reexamination. 
If such a petition is not filed within one (1) month of 
the examiner’s determination denying reexamination, 
the CRU then processes the reexamination file to 
provide the partial refund set forth in 37 CFR 1.26(c) 
(the Office of Finance no longer processes reexamination 
proceedings for a refund). The reexamination 
proceeding is then given a 420 status. A copy of the 
PALM “Application Number Information” screen and 
the “Contents” screen is printed, the printed copy is 
annotated by adding the comment “PROCEEDING 
CONCLUDED,” and the annotated copy is then 
scanned into IFW using the miscellaneous letter document 
code.

The concluded reexamination file (electronic or 
paper) containing the request and the decision denying 
the request becomes part of the patent’s record.

PANEL REVIEW CONFERENCE

After an examiner has determined that the reexamination 
proceeding is ready for denying reexamination, 
the examiner will formulate a draft preliminary order 
denying reexamination. The examiner will then 
inform his/her Special Program Examiner (SPRE) of 
his/her intent to issue an order denying reexamination. 
The SPRE will convene a panel review conference, 
and the conference members will review the matter. 
See MPEP § 2271.01 for the make-up of the panel. If 
the conference confirms the examiner’s preliminary 
decision to deny reexamination, the proposed order 
denying reexamination shall be issued and signed by 
the examiner, with the two other conferees initialing 
the action (as “conferee”) to indicate their presence in 
the conference. If the conference does not confirm the 
examiner’s preliminary decision, the examiner will 
reevaluate and issue an appropriate communication.

===2247.01 Examples of Decisions on Request for Reexamination===

Examples of decisions on requests for ex partereexamination are provided below. The first example 
is a grant of an ex parte reexamination. The second 
example is a denial of an ex parte reexamination. The 
examiner should leave the paper number blank since 
IFW files do not have a paper number.




 

Citation of Prior Art and Ex Parte Reexamination of PatentsCitation of Prior Art and Ex Parte Reexamination of Patents





 

DECISION

A substantial new question of patentability affecting Claims 1 - 3 of United States Patent Number 
9,999,999 to Key is raised by the request for reexamination.


Extensions of time under 37 CFR 1.136(a) will not be permitted in these proceedings because the provisions 
of 37 CFR 1.136 apply only to “an applicant” and not to parties in a reexamination proceeding. 
Additionally, Office policy requires that reexamination proceedings “will be conducted with special dispatch” 
(37 CFR 1.550(a)) and provides for extensions of time in reexamination proceedings as set forth 
in 37 CFR 1.550(c).
The patent owner is reminded of the continuing responsibility under 37 CFR 1.565(a), to apprise the 
Office of any litigation activity, or other prior or concurrent proceeding, involving Patent No. 9,999,999 
throughout the course of this reexamination proceeding.


The request indicates that Requester considers that Claims 1 - 3 are unpatentable over Smith taken with 
Jones.


The request further indicates that Requester considers that Claim 4 is unpatentable over the Horn publication.


It is agreed that the consideration of Smith raises a substantial new question of patentability as to Claims 
1 - 3 of the Key patent. As pointed out on pages 2 - 3 of the request, Smith teaches using an extruder 
supported on springs at a 30 degree angle to the horizontal but does not teach the specific polymer of 
Claims 1 - 3 which is extruded. The teaching as to spring-supporting the extruder at 30 degrees was not 
present in the prosecution of the application which became the Key patent. Further, there is a substantial 
likelihood that a reasonable examiner 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 has not been decided 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 
to the extrusion die is a substantial equivalent of the teaching of the die by the Dorn patent which was 
considered in the prosecution of the application which became the Key patent. The Office will, however, 
exercise its discretion to reexamine, Claim 4  along with Claims 1 - 3 of the Key patent.

All correspondence relating to this ex parte reexamination proceeding should be directed:

By Mail to:

Mail Stop Ex Parte 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

Any inquiry concerning this communication should be directed to Kenneth Schor at telephone number 
(571) 272-0000.

Kenneth M. Schor

Kenneth M. Schor

Primary Examiner

Art Unit 3725

ARIConferee

BZ

Conferee








 

Example (2): Decision Denying Request for ReexaminationExample (2): Decision Denying Request for Reexamination





 

DECISION

No substantial new question of patentability is raised by the request for reexamination and prior art cited 
therein for the reasons set forth below.


The request indicates that Requester considers that a substantial new question of patentability is raised 
as to Claims 1 - 2 based on Smith taken with Jones.


The request further indicates that Requester considers that a substantial new question of patentability is 
raised as to Claim 3 based on Smith taken with Jones and when further taken with the Horn publication.


The claims of the Key patent, for which reexamination is requested, require that an extruder be supported 
on springs at an angle of 30 degrees to the horizontal, while a specific chlorinated polymer is 
extruded through a specific extrusion die.


The Smith patent does not raise a substantial new question of patentability as to the Key claims. Smith’s 
teaching as to the extruder being spring-supported at 30 degrees is a substantial equivalent of the teaching 
of same by the Dorn patent which was considered in the prosecution of the application which 
became the Key patent.


In the request for reexamination, it is argued that Jones teaches the extrusion die. However, Jones was 
also used in the prosecution of the Key application to teach the extrusion die.


The request argued that the Horn publication shows the connection of the support means to the extruder 
via bolts, as recited in Claim 3 of the Key patent. Although this teaching was not provided in the prosecution 
of the Key application, the teaching would not be considered to be important to a reasonable 
examiner in deciding whether or not the Key claims are patentable. The use of a bolt instead of a screw 
(which was taught by the art of record in the Key application) to provide the connection has not been 
shown in the request to be important in the context of attaching the support means to the extruder.


The references set forth in the request have been considered both alone and in combination. They fail to 
raise a substantial new question of patentability as to any one of the Key patent claims. Accordingly, the 
request for reexamination is DENIED.

All correspondence relating to this ex parte reexamination proceeding should be directed:

By Mail to:

Mail Stop Ex Parte 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








 

Any inquiry concerning this communication should be directed to Kenneth Schor at telephone number 
(571) 272-0000.

Kenneth M. Schor

Kenneth M. Schor
Primary Examiner

Art Unit 3725

ARI

Conferee

BZ

Conferee








 

==2248 Petition From Denial of Request==

37 CFR 1.515. Determination of the request for ex parte 
reexamination. 



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

PROCESSING OF PETITION UNDER 37 CFR 
1.515(c)

After a request for reexamination has been denied, 
jurisdiction over the reexamination proceeding is 
retained by the Central Reexamination Unit 
(CRU), to await the possibility of a petition seeking 
review of the examiner’s determination refusing reexamination. 
If a petition seeking review of the examiner’s 
determination refusing reexamination is not 
filed within one (1) month of the examiner’s determination, 
the CRU will then process the reexamination 
file as a concluded reexamination file. See MPEP 
§ 2247 and § 2294.

If a petition seeking review of the examiner’s determination 
refusing reexamination is filed, it is forwarded 
(together with the reexamination file) to the 
Office of the CRU Director for decision. Where a 
petition is filed, the CRU Director will review the 
examiner’s determination that a substantial new question 
of patentability has not been raised. The CRU
Director’s review will be de novo. Each decision by 
the CRU Director will conclude with the paragraph:


This decision is final and nonappealable. See 35 U.S.C. 
303(c) and 37 CFR 1.515(c). No further communication 
on this matter will be acknowledged or considered.

If the petition is granted, the decision of the 
CRU Director should include a sentence setting a 
2-month period for filing a statement under 37 CFR 
1.530; the reexamination file will then be returned to 
the Special Program Examiner (SPRE) of the art 
unit that will handle the reexamination for consideration 
of reassignment to another examiner.

Reassignment will be the general rule. Only in 
exceptional circumstances where no other examiner is 
available and capable to give a proper examination, 
will the case remain with the examiner who denied 
the request. 

Under normal circumstances, the reexamination 
proceeding will not be reassigned to a  primary 
examiner or assistant examiner who was involved in 
any part of the examination of the patent for which 
reexamination is requested. Only where unusual circumstances 
are found to exist may the CRU
Director make an exception to this practice and reassign 
the reexamination proceeding to an examiner 
involved with the examination of the patent. For 
example, if the original examiner of the patent and the 
examiner who issued the denial are the only examiners 
with adequate knowledge of the relevant technology, 
the CRU Director may permit reassignment 
of the reexamination proceeding to the examiner that 
originally examined the patent.

The requester may seek review of a denial of a 
request for reexamination only by petitioning the 
Director of the USPTO under 37 CFR 1.515(c) and 
1.181 within 1 month of the mailing date of the decision 
denying the request for reexamination. Additionally, 
any request for an extension of the time period to 
file such a petition from the denial of a request for 
reexamination can only be entertained by filing a petition 
under 37 CFR 1.183 with appropriate fee to 
waive the time provisions of 37 CFR 1.515(c).

After the time for petition has expired without a 
petition having been filed, or a petition has been filed 
and the decision thereon affirms the denial of the 
request, a partial refund of the filing fee for requesting 
reexamination will be made to the requester. 
(35 
U.S.C. 303(c) and 37 CFR 1.26(c)). A decision on 
a petition under 37 CFR 1.515(c) is final and is not 
appealable.

37 CFR 1.515(c) applies only where reexamination 
is denied; it does not apply to a grant of reexamination 
where either the patent owner or the requester is not 
satisfied with one or more findings made in a decision 
granting reexamination. Except for the limited exception 
described in MPEP § 2246, no petition may be 
filed requesting review of a decision granting a 
request for reexamination, even if the decision grants 
the request as to a specific claim for reasons other 
than those advanced by the requester. No right to 




 

review exists as to that claim, because it will be 
reexamined in view of all prior art during the reexamination 
under 37 CFR 1.550.

==2249 Patent Owner’s Statement==

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

(a)Except as provided in § 1.510(e), no statement or other 
response by the patent owner in an ex parte reexamination proceeding 
shall be filed prior to the determinations made in accordance 
with § 1.515 or § 1.520. If a premature statement or other 
response is filed by the patent owner, it will not be acknowledged 
or considered in making the determination.

(b)The order for ex parte reexamination will set a period of 
not less than two months from the date of the order within which 
the patent owner may file a statement on the new question of patentability, 
including any proposed amendments the patent owner 
wishes to make.

(c)Any statement filed by the patent owner shall clearly 
point out why the subject matter as claimed is not anticipated or 
rendered obvious by the prior art patents or printed publications, 
either alone or in any reasonable combinations. Where the reexamination 
request was filed by a third party requester, any statement 
filed by the patent owner must be served upon the ex partereexamination requester in accordance with § 1.248.



The patent owner has no right to file a statement 
subsequent to the filing of the request but prior to the 
order for reexamination. Any such premature statement 
will not be acknowledged nor considered by the 
Office when making the decision on the request. See 
MPEP § 2225 and Patlex Corp. v. Mossinghoff, 771 
F.2d 480, 226 USPQ 985 (Fed. Cir. 1985).

If reexamination is ordered, the decision will set a 
period of not less than 2 months within which period 
the patent owner may file a statement and any narrowing 
amendments to the patent claims. If necessary, an 
extension of time beyond the 2 months may be 
requested under 37 CFR 1.550(c) by the patent owner. 
Such request is decided by the Technology Center 
(TC) or Central Reexamination Unit (CRU) Director.


Any statement filed must clearly point out why the 
patent claims are believed to be patentable, considering 
the cited prior art patents or printed publications 
alone or in any reasonable combination.

A copy of the statement must be served by the 
patent owner on the requester, unless the request was 
filed by the patent owner.

In the event the decision is made to reexamine, 35 
U.S.C. 304 provides that the owner will have a period, 
not less than 2 months, to file a statement directed to 
the issue of patentability. Since the 2-month period is 
the minimum provided by statute, first extensions 
may be granted up to one (1) month based upon good 
and sufficient reasons. Further extensions should be 
granted only in the most extraordinary situations; e.g., 
death or incapacitation of the representative or owner.

Lack of proof of service especially poses a problem 
where the patent owner fails to indicate that he or she 
has served the requester in the statement subsequent 
to the order for reexamination (37 CFR 1.530(c)). In 
this situation, the Reexamination Clerk should immediately 
contact the patent owner by telephone to see 
whether the indication of proof of service was inadvertently 
omitted from the patent owner’s response. If 
it was, the patent owner should be advised to submit a 
supplemental paper indicating the manner and date of 
service on requester. If the patent owner cannot be 
contacted, the Reexamination Clerk will then contact 
the requester to verify that service has in fact been 
made by the patent owner and indicate that acknowledgment 
of proof of service should accompany 
requester’s reply (37 CFR 1.248(b)(1)). If the 2-
month period for response under 37 CFR 1.530 has 
expired and requester has not been served, the patent 
owner’s statement is considered inappropriate 
(37 
CFR 1.248) and may be denied consideration; see 
MPEP § 2267.

See also MPEP § 2266.03 for further discussion as 
to the patent owner providing service on the third 
party requester.

It should be noted that the period for response by 
requester for a reply under 37 CFR 1.535 is 2 months 
from the owner’s service date and not 2 months from 
the date the patent owner’s statement was received in 
the Office.

Where the patent owner has determined that a 
statement under 37 CFR 1.530 will not be filed, the 
patent owner may expedite the reexamination proceeding 
by filing a paper that indicates that the patent 
owner waives the filing of a statement under 37 CFR 
1.530 and serving the waiver on the requester, if any. 




 

This will permit reexamination of the proceeding to 
proceed pursuant to 37 CFR 1.550(a).

==2250 Amendment by Patent Owner==

37 CFR 1.121. Manner of making amendments in 
application.



(j)Amendments in reexamination proceedings. Any proposed 
amendment to the description and claims in patents 
involved in reexamination proceedings must be made in accordance 
with § 1.530.

37 CFR 1.530. Statement by patent owner in ex partereexamination; amendment by patent owner in ex parte or 
inter 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 directing that proposed 
specified changes be made to the patent specification, including 
the claims, or to the drawings. An amendment paper directing that 
proposed specified changes be made in a reexamination proceeding 
may be submitted as an accompaniment to a request filed by 
the patent owner in accordance with § 1.510(e), as part of a patent 
owner statement in accordance with paragraph (b) of this section, 
or, where permitted, during the prosecution of the reexamination 
proceeding pursuant to §
 
1.550(a) or § 1.937.

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

(2)Claims. An amendment paper must include the entire 
text of each patent claim which is being proposed to be changed 
by such amendment paper and of each new claim being proposed 
to be added by such amendment paper. For any claim changed by 
the amendment paper, a parenthetical expression “amended,” 
“twice amended,” etc., should follow the claim number. Each 
patent claim proposed to be changed and each proposed added 
claim must include markings pursuant to paragraph (f) of this section, 
except that a patent claim or proposed added claim should be 
canceled by a statement canceling the claim, without presentation 
of the text of the claim.

(3)Drawings. Any change to the patent drawings must be 
submitted as a sketch on a separate paper showing the proposed 
changes in red for approval by the examiner. Upon approval of the 
changes by the examiner, only new sheets of drawings including 
the changes and in compliance with § 1.84 must 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 surrounded by brackets and identified 
as “Canceled.” 

(4)The formal requirements for papers making up the 
reexamination proceeding other than those set forth in this section 
are set out in § 1.52.

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

(f)Changes shown by markings. Any changes relative to the 
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 reexamination proceeding 
must be enclosed in brackets; and

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

(g)Numbering of patent claims preserved. Patent claims 
may not be renumbered. The numbering of any claims added in 
the reexamination proceeding must follow the number of the highest 
numbered patent claim.

(h)Amendment of disclosure may be required. The disclosure 
must be amended, when required by the Office, to correct 
inaccuracies of description and definition, and to secure substantial 
correspondence between the claims, the remainder of the specification, 
and the drawings.

(i)Amendments made relative to patent. All amendments 
must be made relative to the patent specification, including the 
claims, and drawings, which are in effect as of the date of filing 
the request for reexamination.

(j)No enlargement of claim scope. No amendment may 
enlarge the scope of the claims of the patent or introduce new matter. 
No amendment may be proposed for entry in an expired 
patent. Moreover, no amendment, other than the cancellation of 
claims, will be incorporated into the patent by a certificate issued 
after the expiration of the patent.

(k)Amendments not effective until certificate. Although the 
Office actions will treat proposed amendments as though they 
have been entered, the proposed amendments will not be effective 
until the reexamination certificate is issued.



37 CFR 1.52. Language, paper, writing, margins, compact 
disc specifications.

(a)Papers that are to become a part of the permanent 
United States Patent and Trademark Office records in the file of a 
patent application or a reexamination proceeding. 

(1)All papers, other than drawings, that are submitted on 
paper or by facsimile transmission, and are to become a part of the 
permanent United States Patent and Trademark Office records in 
the file of a patent application or reexamination proceeding, must 




 

be on sheets of paper that are the same size, not permanently 
bound together, and: 

(i)Flexible, strong, smooth, non-shiny, durable, and 
white;

(ii)Either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 
cm by 27.9 cm (8 1/2 by 11 inches), with each sheet including a 
top margin of at least 2.0 cm (3/4 inch), a left side margin of at 
least 2.5 cm (1 inch), a right side margin of at least 2.0 cm (3/4 
inch), and a bottom margin of at least 2.0 cm (3/4 inch);

(iii)Written on only one side in portrait orientation;

(iv)Plainly and legibly written either by a typewriter 
or machine printer in permanent dark ink or its equivalent; and

(v)Presented in a form having sufficient clarity and 
contrast between the paper and the writing thereon to permit the 
direct reproduction of readily legible copies in any number by use 
of photographic, electrostatic, photo-offset, and microfilming processes 
and electronic capture by use of digital imaging and optical 
character recognition.

(2)All papers that are submitted on paper or by facsimile 
transmission and are to become a part of the permanent records of 
the United States Patent and Trademark Office should have no 
holes in the sheets as submitted. 

(3)The provisions of this paragraph and paragraph (b) of 
this section do not apply to the pre-printed information on paper 
forms provided by the Office, or to the copy of the patent submitted 
on paper in double column format as the specification in a 
reissue application or request for reexamination.

(4)See § 1.58 for chemical and mathematical formulae 
and tables, and § 1.84 for drawings. 

(5)Papers that are submitted electronically to 
the Office 
must be formatted and transmitted in compliance with the Office’s 
electronic filing system requirements. 

(b)The application (specification, including the claims, 
drawings, and oath or declaration) or reexamination proceeding 
and any amendments or corrections to the application or reexamination 
proceeding.

(1)The application or proceeding and any amendments or 
corrections to the application (including any translation submitted 
pursuant to paragraph (d) of this section) or proceeding, except as 
provided for in § 1.69 and paragraph (d) of this section, must:

(i)Comply with the requirements of paragraph (a) of 
this section; and

(ii)Be in the English language or be accompanied by 
a translation of the application and a translation of any corrections 
or amendments into the English language together with a statement 
that the translation is accurate.

(2)The specification (including the abstract and 
claims) for other than reissue applications and reexamination proceedings, 
and any amendments for applications (including reissue 
applications) and reexamination proceedings to the specification, 
except as provided for in §§ 1.821 through 1.825, must have:

(i)Lines that are 1 1/2 or double spaced;

(ii)Text written in a nonscript type font (e.g., Arial, 
Times Roman, or Courier, preferably a font size of 12) lettering 
style having capital letters which should be at least 0.3175 cm. 
(0.125 inch) high, but may be no smaller than 0.21 cm. (0.08 inch) 
high (e.g., a font size of 6); and 

(iii)Only a single column of text.

(3)The claim or claims must commence on a separate 
physical sheet or electronic page (§ 1.75(h)).

(4)The abstract must commence on a separate physical 
sheet or electronic page or be submitted as the first page of the 
patent in a reissue application or reexamination proceeding (§ 
1.72(b)). 





Amendments to the patent (one which has not 
expired) may be filed by the patent owner with his or 
her request. See MPEP § 2221. Such amendments, 
however, may not enlarge the scope of a claim of the 
patent or introduce new matter. Amended or new 
claims which broaden or enlarge the scope of a claim 
of the patent should be rejected under 35 U.S.C. 305. 
The test for when an amended or “new claim enlarges 
the scope of an original claim under 35 U.S.C. 305 is 
the same as that under the 2-year limitation for reissue 
applications adding enlarging claims under 35 U.S.C. 
251, last paragraph.” In re Freeman, 30 F.3d 1459, 
1464, 31 
USPQ2d 1444, 1447 (Fed. Cir. 1994). See 
MPEP § 2258 for a discussion of enlargement of 
claim scope. For handling of new matter, see MPEP § 
2270. Amendments proposed in a reexamination will 
normally be entered and be considered to be entered 
for purposes of prosecution before the Office (if they 
are timely and comply with the rules); however, the 
amendments do not become effective in the patent 
until the reexamination certificate under 35 U.S.C. 
307 is issued.

No amendment will be permitted where the certificate 
issues after expiration of the patent. See 37 CFR 
1.530(d)(3). The patent expiration date for a utility 
patent, for example, is determined by taking into 
account the term of the patent, whether maintenance 
fees have been paid for the patent, whether any disclaimer 
was filed as to the patent to shorten its term, 
any patent term extensions or adjustments for delays 
within the USPTO under 35 U.S.C. 154 (see MPEP 
§
 
2710 et seq.), and any patent term extensions available 
under 35 U.S.C. 156 for premarket regulatory 
review (see MPEP § 2750 et. seq.). Any other relevant 
information should also be taken into account.

Amendment Entry — Amendments which comply 
with 37 CFR 1.530(d)-(j) (and are formally presented 
pursuant to 37 CFR 1.52(a) and (b), and contain all 
fees required by 37 CFR 1.20(c)) will be entered in 
the reexamination file pursuant to the guidelines set 
forth in MPEP § 2234.

I.MANNER OF MAKING AMENDMENTS 
IN REEXAMINATION PROCEEDINGS

Amendments made in a reexamination proceeding 
must comply with the formal requirements of 37 CFR 
1.52(a) and (b), as do all papers that are to become a 
part of the permanent USPTO file records in a patent 
application or proceeding. If an amendment is submitted 
to add claims to the patent being reexamined (i.e., 
to provide new claims), then excess claim fees pursuant 
to 37 CFR 1.20(c)(3) and (4) may be applicable to 
the presentation of the added claims. See MPEP 
§ 2250.03. In addition, the provisions of 37 CFR 
1.530(d)-(k) uniquely apply to amendments in both ex 
parte and inter partes reexamination proceedings, as 
follows.

A.The Specification

37 CFR 1.530(d)(1) relates to the manner of making 
amendments to the reexamination “specification” 
(other than the claims). It is not to be used for making 
amendments to the claims or the drawings.

37 CFR 1.530(d)(1) requires that all amendments, 
which include any deletions or additions, must be 
made by submission of the full text of any paragraph 
to be changed in any manner, with markings (brackets 
and underlining) showing the changes. It should be 
noted that examiner’s amendments made at the time 
when the Notice of Intent to Issue Reexamination 
Certificate (NIRC) is prepared also require the full 
text of any paragraph to be changed, with markings. 
The exception for examiner’s amendment set forth in 
37 CFR 1.121(g) does not apply to examiner’s 
amendments in reexamination proceedings. It should 
further be noted that the requirement of 37 CFR 
1.530(d)(1) applies regardless of whether the amendment 
is submitted on paper or on compact disc (pursuant 
to 37 CFR 1.96 or 1.825). The only exception to 
this requirement is that an entire paragraph of specification 
text may be deleted from the specification by a 
statement deleting the paragraph without the presentation 
of the text of the paragraph.

 In accordance with 37 CFR 1.530(d)(1), all paragraphs 
which are added to the specification must be 
submitted as completely underlined.

37 CFR 1.530(d)(1) requires that the precise point 
where each amendment is to be made must be indicated.


37 CFR 1.530(d)(1) defines the “markings” by reference 
to 37 CFR 1.530(f) as being brackets for deletion 
and underlining for addition. All bracketing and 
underlining is made in comparison to the original 
patent; not in comparison with the prior amendment.

Where a change is made in one sentence, paragraph 
or page of the patent, and the change increases or 
decreases the size of the sentence, paragraph or page, 
this will have no effect on the body of the reexamination 
“specification” (the copy of the patent). This is 
because all insertions are made as blocked additions 
of paragraphs, which are not physically inserted 
within the specification papers. Rather, each blocked 
paragraph is assigned a letter and number, and a caret 
written in the specification papers indicates where the 
blocked paragraph is to be incorporated. Therefore, a 
reexamination patent owner need not be concerned 
with page formatting considerations when presenting 
amendments to the Office.

B.The Claims

37 CFR 1.530(d)(2) relates to the manner of making 
amendments to the claims in a reexamination proceeding. 
It is not to be used for making amendments 
to the remainder of the specification or to the drawings.


37 CFR 1.530(d)(2) requires that:

(A)for each claim that is proposed to be amended 
by the amendment paper being submitted (the current 
amendment paper), the entire text of the claim must 
be presented with appropriate markings showing the 
changes to the claim;

(B)for each proposed new claim which is added 
in the reexamination by the amendment paper being 
submitted (the current amendment paper), the entire 
text of the proposed new claim must be presented and 
it must be underlined throughout;

(C)a patent claim is canceled by a direction to 
cancel that claim, there is no need to present the text 
of the patent claim surrounded by brackets; and

(D)a proposed new claim (previously added in 
the reexamination) is canceled by a direction to cancel 
that claim.




 

It should be noted that examiner’s amendments 
made at the time when the Notice of Intent to Issue 
Reexamination Certificate (NIRC) is prepared also 
require the full text of any claim to be changed, with 
markings. The exception for examiner’s amendment 
set forth in 37 CFR 1.121(g) does not apply to examiner’s 
amendments in reexamination proceedings. It 
should further be noted that the requirements of 
37 
CFR 1.530(d)(2) apply regardless of whether the 
amendment is submitted on paper or on compact disc 
(pursuant to 37 CFR 1.96 or 1.825).

 In accordance with 37 CFR 1.530(e), each amendment 
submitted must set forth the status of all patent 
claims and all added claims as of the date of the submission. 
The status to be set forth is whether the claim 
is pending, or canceled. The failure to submit the 
claim status will generally result in a notification to 
the patent owner of an informal response (see MPEP 
§ 2266.02) prior to final rejection. Such an amendment 
submitted after final rejection will not be 
entered.

 Also in accordance with 37 CFR 1.530(e), each 
claim amendment must be accompanied by an explanation 
of the support in the disclosure of the patent for 
the amendment (i.e., support for the changes made in 
the claim(s), support for any insertions and deletions). 
The failure to submit an explanation will generally 
result in a notification to the patent owner that the 
amendment prior to final rejection is not completely 
responsive since the failure to set forth the support in 
the disclosure goes to the merits of the case (see 
MPEP § 2266.01). Such an amendment submitted 
after final rejection will not be entered.

37 CFR 1.530(f) identifies the type of markings 
required in the claim to be amended as underlining for 
added material and single brackets for material 
deleted.

37 CFR 1.530(g) states that original patent claims 
may not be renumbered. A patent claim retains its 
number even if it is canceled in the reexamination 
proceeding, and the numbering of any added claims 
must begin after the last original patent claim.

C.The Drawings

With respect to amendment of the drawings in a 
reexamination proceeding, see MPEP § 2250.01.

II.ALL CHANGES ARE MADE VIS-A-VISTHE PATENT BEING REEXAMINED

When a reexamination certificate is printed, all 
underlined matter is printed in italics and all brackets 
are printed as they were inserted in the proceeding in 
order to thereby show exactly which additions and 
deletions have been made in the patent via the reexamination 
proceeding. In accordance with 37 CFR 
1.530(i), all amendments to the patent being reexamined 
must be made relative to the patent specification 
in effect as of the date of the filing of the request for 
reexamination. The patent specification includes the 
claims and drawings. If there was a prior change to 
the patent (made via a prior reexamination certificate, 
reissue of the patent, certificate of correction, etc.), 
the first amendment must be made relative to the 
patent specification as changed by the prior proceeding 
or other mechanism for changing the patent. All 
amendments subsequent to the first amendment must 
also be made relative to the patent specification in 
effect as of the date of the filing of the request for 
reexamination, and not relative to the prior amendment.


III.AMENDMENT AFTER THE PATENT HAS 
EXPIRED

 Pursuant to 37 CFR 1.530(j), “[n]o amendment 
may be proposed for entry in an expired patent.” 
Thus, if a patent expires during the pendency of a 
reexamination proceeding for a patent, all amendments 
to the patent claims and all claims added during 
the proceeding are withdrawn. This is carried out by 
placing a diagonal line across all amended and new 
claims (and text added to the specification) residing in 
the amendment papers. The patent owner should be 
notified of this in the next Office action. The Office 
action will hold the amendments to be improper, and 
state that all subsequent reexamination will be on the 
basis of the unamended patent claims. This procedure 
is necessary since no amendments will be incorporated 
into the patent by a certificate after the expiration 
of the patent.

 37 CFR 1.530(j) further states that “[m]oreover, no 
amendment, other than the cancellation of claims, will 
be incorporated into the patent by a certificate issued 
after the expiration of the patent.”

 Thus, at the time the NIRC is to be issued, the 
examiner should ensure that all rejected and objected 
to claims are canceled. The examiner should issue an 
examiner’s amendment canceling any such claims not 
already canceled. 

 The cancellation of the original patent claims is the 
only “amendatory” change permitted in an expired 
patent.

IV.EXAMPLES

A substantial number of problems arise in the 
Office because of improper submission of proposed 
amendments in reexamination proceedings. The following 
examples are provided to assist in the preparation 
of proper proposed amendments in reexamination 
proceedings.

(A)Original Patent Description Or Patent Claim 
Amended

(1)Specification - submit a copy of the entire 
paragraph (of the specification of the patent) being 
amended with underlining and bracketing. Thus, the 
amendment would be presented as follows:

Replace the paragraph beginning at column 4, line 23 with 
the following:

Scanning [is] are controlled by clocks which are, in turn, 
controlled from the display tube line synchronization. 
The signals resulting from scanning the scope of the character 
are delivered in parallel, then converted into serial 
mode through a shift register, wherein the shift signal frequency 
is controlled by a clock that is controlled from the 
display tube line synchronization.

(2)Claims - for changes to the patent claims, 
one must submit a copy of the entire patent claim with 
the amendments shown by underlining and bracketing. 
Thus, the amendment would be presented as follows:





 

Amend claim 6 as follows:

Claim 6. (amended), The apparatus of claim [5] 1wherein the [first] second piezoelectric element is parallel 
to the [second] third piezoelectric element.

If the dependency of any original patent claim 
is to be changed by amendment, it is proper to make 
that original patent claim dependent upon a later filed 
higher numbered claim.

(B)Cancellation of Entire Claim(s)

(1)Original patent claim canceled - in writing, 
direct cancellation of the entire patent claim.

Cancel claim 6.

(2)Proposed new claim (previously added in 
the reexamination) canceled - in writing, direct cancellation 
of the entire claim.

Cancel claim 15.

(C)Presentation Of New Claims

Each proposed new claim (i.e., a claim not found 
in the patent, that is newly presented in the reexamination 
proceeding) should be presented with underlining 
throughout the claim.

Claim 7. The apparatus of claim 5 further comprising 
electrodes attaching to said opposite faces of the second 
and third piezoelectric elements.

Even though an original claim may have been 
canceled, the numbering of the original claims does 
not change. Accordingly, any added claims are numbered 
beginning with the next higher number than the 
number of claims in the original patent. If new claims 
have been added to the reexamination proceeding 
which are later canceled prior to the issuance of the 
reexamination certificate, the examiner will renumber, 
at the time of preparing the NIRC for subsequent 
issuance of the certificate, any remaining new claims 
in numerical order to follow the highest number of the 
claims in the original patent.

A claim number previously assigned to a new 
claim that has been canceled should not be reassigned 
to a different new claim during the reexamination proceeding. 
For example, if new claim 5 added in a prior 
amendment is canceled in a later amendment, a different 
new claim added in a later amendment during the 
reexamination proceeding would be claim 6. Of 
course, at the time of preparing the NIRC, claim 6 
would be renumbered for issue of the reexamination 
certificate as claim 5.

(D)Amendment Of New Claims

An amendment of a new claim (i.e., a claim not 
found in the patent, that was previously presented in 
the reexamination proceeding) must present the entire 
text of the new claim containing the amendatory 
material, and it must be underlined throughout the 
claim. The presentation cannot contain any bracketing 
or other indication of what was in the previous 
version of the claim. This is because all changes in 
the reexamination are made vis-a-vis the original 
patent, and not in comparison with any prior amendment. 
Although the presentation of the amended 
claim does not contain any indication of what is 
changed from a previous version of the claim, patent 
owner must point out what is changed, in the 
“Remarks” portion of the amendment. Also, as per 37 
CFR 1.530(e), each change made in the claim must be 
accompanied by an explanation of the support in the 
disclosure of the patent (i.e., the reexamination specification) 
for the change.

(E)Amendment Of Original Patent Claims More 
Than Once

The following example illustrates proper claim 
amendment of original patent claims in reexamination 
proceedings, where more than one amendment to a 
claim is made:

(1)Patent claim.

Claim 1. A cutting means having a handle portion and a 
blade portion.

(2)Proper first amendment format.

Claim 1. (amended), A [cutting means] knife having a 
bone handle portion and a notched blade portion.

(3)Proper second amendment format.

Claim 1. (twice amended), A [cutting means] knife having 
a handle portion and a serrated blade portion.

Note that the second amendment must include 
(1) the changes previously presented in the first 
amendment; i.e., [cutting means] knife, as well as (2) 
the new changes presented in the second amendment; 
i.e., serrated. 

The word bone was presented in the first amendment 
and is now to be deleted in the second amendment. 
Thus, “bone” is NOT to be shown in brackets in 
the second amendment. Rather, the word “bone” is 




 

simply omitted from the claim, since “bone” never 
appeared in the patent.

The word notched which was presented in the 
first amendment is replaced by the word serrated in 
the second amendment. The word notched is being 
deleted in the second amendment and did not appear 
in the patent; accordingly, “notched” is not shown in 
any form in the claim. The word serrated is being 
added in the second amendment, and accordingly, 
“serrated” is added to the claim and is underlined.

It should be understood that in the second amendment, 
the deletions of “notched” and “bone” are not 
changes from the original patent claim text and therefore, 
are not shown in the second amendment. In both 
the first and the second amendments, the entire claim 
is presented only with the changes from the original 
patent text. 

If the patent expires during an ex parte or inter 
partes reexamination proceeding and the patent 
claims have been amended in that ex parte reexamination 
proceeding, the Office will hold the amendments 
as being improper, and all subsequent reexamination 
will be on the basis of the unamended patent claims. 
This procedure is necessary since no amendments will 
be incorporated into the patent by certificate after the 
expiration of the patent.

V.CROSS REFERENCES TO OTHER 
AREAS

(A)For clerical handling of amendments, see 
MPEP § 2270 for ex parte reexamination proceedings, 
and see MPEP § 2670 for inter partes reexamination 
proceedings.

(B)As to amendments in a merged proceeding, 
see MPEP § 2283 for an ex parte reexamination 
merged with another ex parte reexamination and 
MPEP § 2285 for an ex parte reexamination merged 
with a reissue application. If an inter partes reexamination 
proceeding is included in the merger, see 
MPEP § 2686.01 and § 2686.03.

(C)As to amendments in a pending reexamination 
proceeding where a reexamination certificate has 
issued for the patent based on a prior concluded reexamination, 
pursuant to MPEP § 2295, any amendment 
made in the pending reexamination proceeding must 
be presented as if the changes made to the patent text 
via the reexamination certificate (for the prior concluded 
reexamination) are a part of the original patent. 
All italicized text of the certificate is considered as if 
the text was present without italics in the original 
patent. Further, any text of the reexamination certificate 
found in brackets is considered as if it were never 
present in the patent at all. Thus, for making an 
amendment in the pending reexamination, all italicized 
text of the reexamination certificate is presented 
in the amendment without italics. Further, any text 
found in brackets in the reexamination certificate is 
omitted in the amendment.

(D)As to amendments in a pending reexamination 
proceeding where a reissue patent has been 
granted, pursuant to MPEP § 2285, subsection II.A., 
an amendment in a reexamination of a reissued patent 
is made the same way as in a reexamination of a reexamined 
patent (i.e., as per MPEP § 2295). Thus, all 
italicized text of the reissue patent is presented in the 
amendment (made in the pending reexamination proceeding) 
without italics. Further, any text found in 
brackets in the reissue patent is omitted in the amendment 
(made in the pending reexamination proceeding).


(E)For handling a dependent claim in reexamination 
proceedings, see MPEP § 2260.01.

===2250.01 Correction of Patent Drawings===

37 CFR 1.530. Statement by patent owner in ex parte 
reexamination; amendment by patent owner in ex parte or 
inter partes reexamination; inventorship change in ex parte 
or 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 directing that proposed 
specified changes be made to the patent specification, including 
the claims, or to the drawings. An amendment paper directing that 
proposed specified changes be made in a reexamination proceeding 
may be submitted as an accompaniment to a request filed by 
the patent owner in accordance with § 1.510(e), as part of a patent 
owner statement in accordance with paragraph (b) of this section, 
or, where permitted, during the prosecution of the reexamination 
proceeding pursuant to §
 
1.550(a) or § 1.937.



(3) Drawings. Any change to the patent drawings must be 
submitted as a sketch on a separate paper showing the proposed 
changes in red for approval by the examiner. Upon approval of the 
changes by the examiner, only new sheets of drawings including 
the changes and in compliance with § 1.84 must 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 surrounded by brackets and identified 
as “Canceled.” 



In the reexamination proceeding, the copy of the 
patent drawings submitted pursuant to 37 CFR 
1.510(b)(4) will be used for reexamination purposes, 
provided no change whatsoever is made to the drawings. 
If there is to be ANY change in the drawings, a 
new sheet of drawings for each sheet changed must be 
submitted. The change may NOT be made on the 
original patent drawings.

37 CFR 1.530(d)(3) sets forth the manner of 
making 
amendments to the drawings. Amendments to 
the original patent drawing sheets are not permitted, 
and any change to the patent drawings must be in the 
form of a new sheet of drawings for each drawing 
sheet that is changed. Any amended figure(s) must be 
identified as “Amended” and any added figure(s) 
must be identified as “New.” In the event a figure is 
canceled, the figure must be surrounded by brackets 
and identified as “Canceled.”

Where the patent owner wishes to change/amend 
the 
drawings, the patent owner should submit a sketch 
in 
permanent ink showing proposed change(s)/
amendment(s) in red, for approval by the examiner. 
The submitted sketch should be presented as a separate 
paper, and it will be made part of the record. 
Once the sketch is approved, sheets of substitute formal 
drawings must be submitted for each drawing 
sheet that is to be changed/amended. After receiving 
the new sheets of drawings from the patent owner, the 
examiner may have the draftsperson review the new 
sheets of drawings if the examiner would like the 
draftsperson’s assistance in identifying errors in the 
drawings. If a draftsperson reviews the drawings and 
finds the drawings to be unacceptable, the draftsperson 
should complete a PTO-948 for the examiner to 
include with the next Office action. A draftsperson’s 
“stamp” to indicate approval is no longer required on 
patent drawings, and these stamps are no longer to be 
used by draftspersons. The new sheets of drawings 
must be entered into the record in the reexamination 
file prior to the preparation of a Notice of Intent to 
Issue Ex Parte Reexamination Certificate (NIRC). If a 
proposed drawing correction has been approved but 
the new sheets of drawings have not been filed, and 
the proceeding is otherwise in condition for termination 
of the prosecution by means of a NIRC, an ex 
parte Quayle Office action should be prepared - setting 
a one month SSP for the filing of the new sheets 
of drawing. If the new sheets of drawings are not 
timely filed, the Reexamination Certificate will be 
issued with drawings that do not reflect the changes/
amendments which were proposed by the patent 
owner. 

===2250.02 Correction of Inventorship===

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



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

(1)When it appears in a patent being reexamined that the 
correct inventor or inventors were not named through error without 
deceptive intention on the part of the actual inventor or inventors, 
the Director may, on petition of all the parties set forth in 
§
 
1.324(b)(1)-(3), including the assignees, and satisfactory proof 
of the facts and payment of the fee set forth in § 1.20(b), or on 
order of a court before which such matter is called in question, 
include in the reexamination certificate to be issued under § 1.570or §
 
1.977 an amendment naming only the actual inventor or 
inventors. The petition must be submitted as part of the reexamination 
proceeding and must satisfy the requirements of § 1.324.

(2)Notwithstanding the preceding paragraph (1)(1) of 
this section, if a petition to correct inventorship satisfying the 
requirements of § 1.324 is filed in a reexamination proceeding, 
and the reexamination proceeding is terminated other than by a 
reexamination certificate under § 1.570 or § 1.977, a certificate of 
correction indicating the change of inventorship stated in the petition 
will be issued upon request by the patentee.

Where the inventorship of a patent being reexamined 
is to be corrected, a petition for correction of 
inventorship which complies with 37 CFR 1.324must 
be submitted during the prosecution of the reexamination 
proceeding. See 37 CFR 1.530(l)(1). If the 
petition under 37 CFR 1.324 is granted, a certificate 
of correction indicating the change of inventorship 
will not be issued, because the reexamination certificate 
that will ultimately issue will contain the appropriate 
change of inventorship information. The 
certificate of correction is in effect merged with the 
reexamination certificate. 

In some instances, the reexamination proceeding 
concludes but does not result in a reexamination 




 

certificate under 37 CFR 1.570 or 1.997, e.g., 
reexamination is vacated, or the order for reexamination 
is denied. In those instances, patent owner may, 
after the conclusion of the reexamination proceeding, 
request that the inventorship be corrected by 
a certificate of correction indicating the change of 
inventorship. See 37 CFR 1.530(l)(2). Alternatively, 
the failure to name the correct inventive entity is an 
error in the patent which is correctable by reissue 
under 35 U.S.C. 251. See MPEP § 1412.04 for a discussion 
of when correction of inventorship by reissue 
is appropriate.



===2250.03 Fees for Adding Claims===

37 CFR 1.20. Post issuance fees.



(c)In reexamination proceedings

(1)For filing a request for ex parte reexamination (§ 
1.510(a)............................................................................$2,520.00

(2)For filing a request for inter partes reexamination (§ 
1.915(a)............................................................................$8,800.00

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

By a small entity (§ 1.27(a))..............................$100.00

By other than a small entity ..............................$200.00

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

By a small entity (§ 1.27(a))................................$25.00

By other than a small entity ................................$50.00

(5)If the excess claims fees required by paragraphs (c)(3) 
and (c)(4) are not paid with the request for reexamination or on 
later presentation of the claims for which the excess claims fees 
are due, the fees required by paragraphs (c)(3) and (c)(4) must be 
paid or the claims canceled by amendment prior to the expiration 
of the time period set for reply by the Office in any notice of fee 
deficiency in order to avoid abandonment.



Excess claims fees as specified in 35 U.S.C. 
41(a)(2) as amended by the Consolidated Appropriations 
Act of 2005 are applicable to excess claims proposed 
to be added to a patent by their presentation 
during a reexamination 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 reexamination 
proceedings. The Consolidated Appropriations Act 
does 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 35 
U.S.C. 41(a)(2) (as being in addition to the filing fee 
in 35 U.S.C. 41(a)(1)). 35 U.S.C. 41(a)(2) provides 
that an excess claims fee is due “on filing or on presentation 
at any other time” (e.g., during a reexamination 
proceeding) of an independent claim in excess of 
three or of a claim (whether independent or dependent) 
in excess of twenty.

37 CFR 1.20 was amended, effective December 8, 
2004, to provide for excess claims fees in a reexamination 
proceeding. The excess claims fees specified in 
37 CFR 1.20(c) apply to all patents, whenever 
granted. The fees must be submitted for any excess 
claims presented in a reexamination proceeding on or 
after December 8, 2004 (no excess claims fee was due 
under 35 U.S.C. 41 for any claim presented during a 
reexamination proceeding before December 8, 2004). 
Even though a reexamination proceeding was commenced 
prior to December 8, 2004, the excess claims 
fees are due for any amendment filed on or after 
December 8, 2004. 

When a patent owner presents an amendment to the 
claims (on or after December 8, 2004) during an ex 
parte reexamination proceeding, or upon filing of an 
ex parte reexamination request (on or after December 
8, 2004), excess claims fees may be applicable. If the 
amendment is limited to revising the existing claims, 
i.e., it does not provide any new claim, there is no 
claim fee. The excess claims fees apply only to the 
submission of new, i.e., “excess” claims. 

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

(A)The fee designated in 37 CFR 1.20(c)(3) as 
the independent claims fee must be paid for each 
independent claim in excess of three and also in 
excess of the number of independent claims in the 
patent being reexamined. The amendment must 
increase the number of independent claims to be more 
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) as 
the total claims fee must be paid for each claim 
(whether independent or dependent) in excess of 




 

twenty and also in excess of the number of claims in 
the patent being reexamined. The amendment must 
increase the total number of claims to be more than 
both of these limits, in order for the “total excess 
claims fee” to apply.

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

(A)No excess claims fee is due if the patent 
owner cancels ten claims, two of which are independent, 
and adds ten claims, two of which are independent.


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

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

(D)The 37 CFR 1.20(c)(3) excess independent 
claims fee for a seventh independent claim and the 37 
CFR 1.20(c)(4) excess total claims fee for a thirty-
first claim are due if the patent owner cancels ten 
claims, two of which are independent, and adds 
eleven 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 of the 
request for reexamination is not considered to be a 
claim in the patent under reexamination for purposes 
of excess claims fee calculations. The same applies to 
a claim canceled via a prior Reexamination Certificate, 
reissue patent, or Certificate of Correction.

If the excess claims fees required by 37 CFR 
1.20(c)(3) and (c)(4) are not paid with the presentation 
of the excess claims, a notice of fee deficiency 
will be issued as a Notice of Defective Paper In Ex 
Parte Reexamination, PTOL-475. A one-month time 
period will be set in the form PTOL-475 for correction 
of the defect, i.e., the fee deficiency. An extension of 
time to correct the fee deficiency may be requested 
under 37 CFR 1.550(c). If the unpaid excess claims 
fees required by 37 CFR 1.20(c)(3) and (c)(4) are not 
paid within the time period set for response to the 
Notice, the prosecution of the reexamination proceeding 
will be terminated under 37 CFR 1.550(e), to 
effect the “abandonment” set forth in 37 CFR 
1.20(c)(5).

==2251 Reply by Third Party Requester==

37 CFR 1.535. Reply by third party requester in ex parte 
reexamination.

A reply to the patent owner’s statement under §
 
1.530 may be 
filed by the ex parte reexamination requester within two months 
from the date of service of the patent owner’s statement. Any 
reply by the ex parte requester must be served upon the patent 
owner in accordance with § 1.248. If the patent owner does not 
file a statement under § 1.530, no reply or other submission from 
the ex parte reexamination requester will be considered.

If the patent owner files a statement in a timely 
manner, the third party requester is given a period of 
2 
months from the date of service to reply. Since the 
statute, 35 U.S.C. 304, provides this time period, there 
will be no extensions of time granted.

The reply need not be limited to the issues raised in 
the statement. The reply may include additional prior 
art patents and printed publications and may raise any 
issue appropriate for reexamination.

If no statement is filed by the patent owner, no 
reply is permitted from the third party requester.

The third party requester must serve a copy of the 
reply on the patent owner. See MPEP §
 
2266.03 for 
further discussion as to the third party requester providing 
service on the patent owner. 

The third party requester is not permitted to file any 
further papers after his or her reply to the patent 
owner’s statement. Any further papers will not be 
considered and will be returned to the requester. The 
patent owner cannot file papers on behalf of the third 
party requester and thereby circumvent the rules.

==2252 Consideration of Statement and Reply==

37 CFR 1.540. Consideration of responses in ex parte 
reexamination.

The failure to timely file or serve the documents set forth in 
§
 
1.530 or in § 1.535 may result in their being refused consideration. 
No submissions other than the statement pursuant to 
§
 
1.530 and the reply by the ex parte reexamination requester pursuant 
to §
 
1.535 will be considered prior to examination.

Although 37 CFR 1.540 would appear to be discretionary 
in stating that late responses “may result in 
their being refused consideration,” patent owners and 
requesters can expect consideration to be refused if 




 

the statement and/or reply is not timely filed. 37 CFR 
1.540 restricts the number and kind of submissions to 
be considered prior to examination to those expressly 
provided for in 37 CFR 1.530 and 37 CFR 1.535. 
Untimely submissions will ordinarily not be considered. 
Untimely submissions, other than untimely 
papers filed by the patent owner after the period set 
for response, will not be placed of record in the reexamination 
file but will be returned to the sender.

Any paper for which proof of service is 
required, which is filed without proof of service, may 
be denied consideration. Where no proof of service 
is included, inquiry should be made of the sender by 
the reexamination clerk as to whether service was in 
fact made. If no service was made, the paper is placed 
in the reexamination file but is not considered. See 
MPEP § 2266.03 and § 2267.

==2253 Consideration by Examiner==

Once reexamination is ordered, any submissions 
properly filed and served in accordance with 37 CFR 
1.530 and 37 CFR 1.535 will be considered by the 
examiner when preparing the first Office action.

With respect to consideration of any proposed 
amendments to the specification, including claims, 
made by the patent owner, the examiner will be 
guided by the provisions of 37 CFR 1.530(d)-(j). 
With respect to consideration of the patent owner’s 
statement, the examiner will be guided by 37 CFR 
1.530(c).

As to consideration of a reply by a third party 
requester, the examiner will be guided by 37 CFR 
1.535. If the requester’s reply to the patent owner’s 
statement raises issues not previously presented, such 
issues will be treated by the examiner in the Office 
action if they are within the scope of reexamination. 
However, if an issue raised by the third party 
requester in the reply is not within the scope of reexamination, 
it should be treated pursuant to 37 CFR 
1.552(c).

For handling of new matter, see MPEP § 2270.

==2254 Conduct of Ex Parte Reexamination Proceedings==

35 U.S.C. 305. Conduct of reexamination proceedings.

After the times for filing the statement and reply provided for 
by section 304 of this title have expired, reexamination will be 
conducted according to the procedures established for initial 
examination under the provisions of sections 132 and 133 of this 
title. In any reexamination proceeding under this chapter, the 
patent owner will be permitted to propose any amendment to his 
patent and a new claim or claims thereto, in order to distinguish 
the invention as claimed from the prior art cited under the provisions 
of section 301 of this title, or in response to a decision 
adverse to the patentability of a claim of a patent. No proposed 
amended or new claim enlarging the scope of a claim of the patent 
will be permitted in a reexamination proceeding under this chapter. 
All reexamination proceedings under this section, including 
any appeal to the Board of Patent Appeals and Interferences, will 
be conducted with special dispatch within the Office.

37 CFR 1.550. Conduct of ex parte reexamination 
proceedings.

(a)All ex parte reexamination proceedings, including any 
appeals to the Board of Patent Appeals and Interferences, will be 
conducted with special dispatch within the Office. After issuance 
of the ex parte reexamination order and expiration of the time for 
submitting any responses, the examination will be conducted in 
accordance with §§ 1.104 through 1.116 and will result in the issuance 
of an ex parte reexamination certificate under § 1.570.

(b)The patent owner in an ex parte reexamination proceeding 
will be given at least thirty days to respond to any Office 
action. In response to any rejection, such response may include 
further statements and/or proposed amendments or new claims to 
place the patent in a condition where all claims, if amended as 
proposed, would be patentable.

(c)The time for taking any action by a patent owner in an ex 
parte reexamination proceeding will be extended only for sufficient 
cause and for a reasonable time specified. Any request for 
such extension must be filed on or before the day on which action 
by the patent owner is due, but in no case will the mere filing of a 
request effect any extension. Any request for such extension must 
be accompanied by the petition fee set forth in § 1.17(g). See § 
1.304(a) for extensions of time for filing a notice of appeal to the 
U.S. Court of Appeals for the Federal Circuit or for commencing a 
civil action.

(d)If the patent owner fails to file a timely and appropriate 
response to any Office action or any written statement of an interview 
required under §
 
1.560(b), the ex parte reexamination proceeding 
will be terminated, and the Director will proceed to issue 
a certificate under § 1.570 in accordance with the last action of the 
Office.

(e)If a response by the patent owner is not timely filed in the 
Office,

(1)The delay in filing such response may be excused if it 
is shown to the satisfaction of the Director that the delay was 
unavoidable; a petition to accept an unavoidably delayed response 
must be filed in compliance with § 1.137(a); or

(2)The response may nevertheless be accepted if the 
delay was unintentional; a petition to accept an unintentionally 
delayed response must be filed in compliance with § 1.137(b). 

(f)The reexamination requester will be sent copies of Office 
actions issued during the ex parte reexamination proceeding. 
After filing of a request for ex parte reexamination by a third party 
requester, any document filed by either the patent owner or the 




 

third party requester must be served on the other party in the reexamination 
proceeding in the manner provided by § 1.248. The 
document must reflect service or the document may be refused 
consideration by the Office.

(g)The active participation of the ex parte reexamination 
requester ends with the reply pursuant to §
 
1.535, and no further 
submissions on behalf of the reexamination requester will be 
acknowledged or considered. Further, no submissions on behalf of 
any third parties will be acknowledged or considered unless such 
submissions are:

(1)in accordance with § 1.510 or § 1.535; or

(2)entered in the patent file prior to the date of the order 
for ex parte reexamination pursuant to §
 
1.525.

(h)Submissions by third parties, filed after the date of the 
order for ex parte reexamination pursuant to § 1.525, must meet 
the requirements of and will be treated in accordance with 
§
 
1.501(a).

Once ex parte reexamination is ordered pursuant to 
35 U.S.C. 304 and the times for submitting any 
responses to the order have expired, no further active 
participation by a third party reexamination requester 
is allowed, and no third party submissions will be 
acknowledged or considered unless they are in accordance 
with 37 CFR 1.510. The reexamination proceedings 
will be ex parte, even if ordered based on a 
request filed by a third party, because this was the 
intention of the legislation. Ex parte proceedings preclude 
the introduction of  arguments and issues by 
the third party requester which are not within the 
intent of 35 U.S.C. 305 (“reexamination will be conducted 
according to the procedures established for initial 
examination under the provisions of sections 132and 133 of this title”).

The patent owner may not file papers on behalf of 
the requester and thereby circumvent the intent of the 
ex parte reexamination legislation and the rules. The 
Court of Appeals for the Federal Circuit held in Emerson 
Elec. Co. v. Davoil, Inc., 88 F.3d 1051, 39 
USPQ2d 1474 (Fed. Cir. 1996) that a federal district 
court does not have the authority to order a patent 
owner to file papers prepared by a third party in addition 
to the patent owner’s own submission in a patent 
reexamination proceeding. Such papers prepared by 
the third party and filed by the patent owner will not 
be entered, and the entire submission will be returned 
to the patent owner as an 
inappropriate response. See 
MPEP § 2266 and §
 
2267. 

The examination will be conducted in accordance 
with 37 CFR 1.104, 1.105, 1.110-1.113, and 1.116(35 
U.S.C. 132 and 133) and will result in the issuance 
of a reexamination certificate under 37 CFR 
1.570. The proceeding shall be conducted with special 
dispatch within the Office pursuant to 35 U.S.C. 305, 
last sentence. A full search will not routinely be made 
by the examiner. The third party reexamination 
requester will be sent copies of Office actions and the 
patent owner must serve responses on the requester. 
Citations submitted in the patent file prior to issuance 
of an order for reexamination will be considered by 
the examiner during the reexamination. Reexamination 
will proceed even if the copy of the order sent to 
the patent owner is returned undelivered. The notice 
under 37 CFR 1.11(c) is constructive notice to the 
patent owner and lack of response from the patent 
owner will not delay reexamination. See MPEP 
§
 
2230.

==2255 Who Reexamines==

The examination will ordinarily be conducted by 
the same patent examiner  who made the decision 
on whether the reexamination request should be 
granted. See MPEP § 2236.

However, if a petition under 37 CFR 1.515(c) is 
granted, the reexamination will normally be conducted 
by another examiner. See MPEP § 2248.

==2256 Prior Art Patents and Printed Publications Reviewed by Examiner in Reexamination==

Typically, the primary source of prior art will 
be the patents and printed publications cited in the 
request for ex parte reexamination.

Subject to the discussion provided below in this 
section, the examiner must also consider patents and 
printed publications:

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

(B)cited in a patent owner’s statement under 
37 
CFR 1.530 or a requester’s reply under 37 CFR 
1.535 if they comply with 37 CFR 1.98;

(C)cited by the patent owner under a duty of disclosure 
(37 CFR 1.555) in compliance with 37 CFR 
1.98;

(D)discovered by the examiner in searching;

(E)of record in the patent file from earlier examination; 
and




 

(F)of record in the patent file from any 37 CFR 
1.501 submission prior to date of an order if it complies 
with 37 CFR 1.98. 

The reexamination file must clearly indicate 
which prior art patents and printed publications the 
examiner has considered during the ex parte examination 
of the reexamination proceeding.

Where patents, publications, and other such 
items of information are submitted by a party (patent 
owner or requester) in compliance with the requirements 
of the rules, the requisite degree of consideration 
to be given to such information will be normally 
limited by the degree to which the party filing the 
information citation has explained the content and relevance 
of the information. The initials of the examiner 
placed adjacent to the citations on the form PTO/
SB/08A and 08B or its equivalent, without an indication 
to the contrary in the record, do not signify that 
the information has been considered by the examiner 
any further than to the extent noted above.

As to (E) above, it is pointed out that, even the 
degree of consideration of information from the patent 
file and its parent files is dependent on the availability 
of the information. Thus, for example, if a reference 
other than a U.S. patents and U.S. patent publication 
was discarded at the time the patent was issued and 
was not scanned into the Image File Wrapper (IFW), 
then what was said about the reference in the patent’s 
record is the full extent of consideration, unless otherwise 
indicated.

As to the requirement for a copy of every patent 
or printed publication relied upon or referred to in the 
request, or submitted under 37 CFR 1.98, this requirement 
is not currently being enforced to require copies 
of U.S. patents and U.S. patent publications; and the 
requirement is deemed waived to that extent. 

The exception to the requirement for reference 
copies noted in 37 CFR 1.98(d)(1) does not apply to 
reexamination proceedings since a reexamination proceeding 
does not receive 35 U.S.C. 120 benefit from 
the patent.

AFTER THE NOTICE OF INTENT TO ISSUE 
EX PARTE REEXAMINATION CERTIFICATE 
(NIRC):

Once the NIRC has been mailed, the reexamination 
proceeding must proceed to publication of the Reexamination 
Certificate as soon as possible. Thus, when 
the patent owner provides a submission of patents and 
printed publications, or other information described in 
37 CFR 1.98(a), after the NIRC has been mailed, the 
submission must be accompanied by (A) a factual 
accounting providing a sufficient explanation of why 
the information submitted could not have been submitted 
earlier, and (B) an explanation of the relevance 
of the information submitted with respect to the 
claimed invention in the reexamination proceeding. 
This is provided via a petition under 37 CFR 1.182(with petition fee) for entry and consideration of the 
information submitted after NIRC. The requirement 
in item (B) above is for the purpose of facilitating the 
Office’s compliance with the statutory requirement 
for “special dispatch,” when the requirement in item 
(A) above is satisfied to provide a basis for interrupting 
the proceeding after the NIRC.

Once the reexamination has entered the Reexamination 
Certificate publication process, pulling the proceeding 
from that process provides an even greater 
measure of delay. 37 CFR 1.313 states for an application 
(emphasis added):

“(c) Once the issue fee has been paid, the application 
will not be withdrawn from issue upon petition by the 
applicant for any reason except:

(1) Unpatentability of one of more claims, which petition 
must be accompanied by an unequivocal statement that 
one or more claims are unpatentable, an amendment to such 
claim or claims, and an explanation as to how the amendment 
causes such claim or claims to be patentable;”

The publication process for an application occurs 
after the payment of the issue fee (there is no issue fee 
in reexamination), and thus 37 CFR 1.313(c) applies 
during the publication cycle for an application. Based 
on the statutory requirement for “special dispatch,” 
the requirements for withdrawal of a reexamination 
proceeding from its publication cycle are at least as 
burdensome as those set forth in 37 CFR 1.313(b) and 
(c). Accordingly, where a submission of patents and 
printed publications, or other information described in 
37 CFR 1.98(a), is made while a proceeding is in its 
publication cycle, the patent owner must provide an 
unequivocal statement as to why the art submitted 
makes at least one claim unpatentable, an amendment 
to such claim or claims, and an explanation as to how 
the amendment causes such claim or claims to be patentable. 
This is in addition to the above-discussed (A) 
a factual accounting providing a sufficient explana





 

tion of why the information submitted could not have 
been submitted earlier. The submission of patents and 
printed publications must be accompanied by a petition 
under 37 CFR 1.182 (with petition fee) for withdrawal 
of the reexamination proceeding from the 
publication process for entry and consideration of the 
information submitted by patent owner. A grantable 
petition must provide the requisite showing discussed 
in this paragraph. 

No consideration will be given to a third party 
requester submission of patents and printed publication, 
or other information, that is filed in the reexamination 
proceeding unless it is part of the request for 
reexamination or the requester’s reply under 37 CFR 
1.540.

==2257 Listing of Prior Art==

The examiner must list on a form PTO-892, if not 
already listed on a form  PTO/SB/08A or 08B, or 
PTO/SB/42 (or on a form having a format equivalent 
to one of these forms), all prior art patents or printed 
publications which have been properly cited and 
relied upon by the reexamination requester in the 
request under 37 CFR 1.510.

The examiner must also list on a form PTO-892, if 
not already listed on a form  PTO/SB/08A or 08B, 
or PTO/SB/42 (or on a form having a format equivalent 
to one of these forms), all prior art patents or 
printed publications which have been cited in the 
decision on the request, applied in making rejections 
or cited as being pertinent during the reexamination 
proceedings. Such prior art patents or printed publications 
may have come to the examiner’s attention 
because:

(A)they were of record in the patent file due to a 
prior art submission under 37 CFR 1.501 which was 
received prior to the date of the order;

(B)they were of record in the patent file as result 
of earlier examination proceedings; or

(C)they were discovered by the examiner during 
a prior art search.

All citations listed on form PTO-892, and all citations 
not lined-through on any form  PTO/SB/08A 
or 08B, or PTO/SB/42 (or on a form having a format 
equivalent to one of these forms), will be printed on 
the reexamination certificate under “References 
Cited.”

 A submission of patents and/or publications is entitled 
to entry and citation in the reexamination certificate 
(that will be issued) when it complies with 
37 
CFR 1.98 and is submitted: 

(A)by the patent owner in the statement under 
37 
CFR 1.530;

(B)by the reexamination requester in the reply 
under 37 CFR 1.535;

(C)prior to the order of reexamination under 
37 
CFR 1.501 by any party; and/or 

(D)by the patent owner under the duty of disclosure 
requirements of 37 CFR 1.555.

2258Scope of Ex Parte Reexamination 
[R-5]

37 CFR 1.552. Scope of reexamination in ex parte 
reexamination proceedings.

(a)Claims in an ex parte reexamination proceeding will be 
examined on the basis of patents or printed publications and, with 
respect to subject matter added or deleted in the reexamination 
proceeding, on the basis of the requirements of 35 U.S.C. 112.

(b)Claims in an ex parte reexamination proceeding will not 
be permitted to enlarge the scope of the claims of the patent.

(c)Issues other than those indicated in paragraphs (a) and 
(b) of this section will not be resolved in a reexamination proceeding. 
If such issues are raised by the patent owner or third party 
requester during a reexamination proceeding, the existence of 
such issues will be noted by the examiner in the next Office 
action, in which case the patent owner may consider the advisability 
of filing a reissue application to have such issues considered 
and resolved.

The reexamination proceeding provides a complete 
reexamination of the patent claims on the basis of 
prior art patents and printed publications. Issues relating 
to 35 U.S.C. 112 are addressed only with respect 
to new claims or amendatory subject matter in the 
specification, claims or drawings. Any new or 
amended claims are examined to ensure that the scope 
of the original patent claims is not enlarged, i.e., 
broadened. See 35 U.S.C. 305.

I.PRIOR ART PATENTS OR PRINTED 
PUBLICATIONS, AND DOUBLE PATENTING


Rejections on prior art in reexamination proceedings 
may only be made on the basis of prior art patents 
or printed publications. Prior art rejections may 
be based upon the following portions of 35 U.S.C. 
102:




 

“(a) . . . patented or described in a printed publication in 
this or a foreign country, before the invention thereof by 
the applicant for patent, or”

“(b) the invention was patented or described in a printed 
publication in this or a foreign country . . . more than one 
year prior to the date of the application for patent in the 
United States, or”



“(d) the invention was first patented or caused to be patented, 
or was the subject of an inventor’s certificate, by 
the applicant or his legal representatives or assigns in a 
foreign country prior to the date of the application for 
patent in this country on an application for patent or 
inventor’s certificate filed more than twelve months 
before the filing of the application in the United States, 
or”

(e) the invention was described in — (1) an application 
for patent, published under section 122(b), by another filed 
in the United States before the invention by the applicant for 
patent or (2) a patent granted on an application for patent by 
another filed in the United States before the invention by the 
applicant for patent, except that an international application 
filed under the treaty defined in section 351(a) shall have 
the effects for the purposes of this subsection of an application 
filed in the United States only if the international application 
designated the United States and was published under 
Article 21(2) of such treaty in the English language; or” 



“(g)(1) during the course of an interference conducted 
under section 135 or section 291, another inventor 
involved therein establishes, to the extent permitted in 
section 104, that before such person’s invention thereof 
the invention was made by such other inventor and not 
abandoned, suppressed, or concealed, or (2) before such 
person’s invention thereof, the invention was made in this 
country by another inventor who had not abandoned, suppressed, 
or concealed it. In determining priority of invention 
under this subsection, there shall be considered not 
only the respective dates of conception and reduction to 
practice of the invention, but also the reasonable diligence 
of one who was first to conceive and last to reduce to 
practice, from a time prior to conception by the other.”



Rejections made under 35 U.S.C. 102(g) based on 
the prior invention of another must be disclosed in a 
patent or printed publication. A substantial new 
question of patentability may be 
found under 35 
U.S.C. 102(g)/103 based on the prior invention 
of another disclosed in a patent or printed publication, 
only if there was no common ownership at 
the 
time 
the 
claimed invention was made. See MPEP 
§
 
706.02(l). See MPEP §
 
706.02(l)(1) for information 
pertaining to references which qualify as prior art 
under 35 U.S.C. 102(e)/103. 

A.Previously Considered Prior Art Patents or 
Printed Publications

After reexamination is ordered based on a proper 
substantial new question of patentability, the propriety 
of making a ground of rejection based on prior art previously 
considered by the Office (in an earlier examination 
of the patent) is governed by the guidance set 
forth in MPEP § 2258.01. Note also In re Hiniker Co., 
150 F.3d 1362, 1367, 47 USPQ2d 1523,1527 (Fed. 
Cir. 1998)(court held the reexamination proceeding 
was supported by a substantial new question of patentability 
where the rejection before the court was 
based on a combination of art that had been before the 
examiner during the original prosecution, and art 
newly cited during the reexamination proceeding.
The court further stated that any error in the Commissioner’s 
authority to institute a reexamination was 
“washed clean” during the reexamination procedure.)


B.Matters Other Than Patents or Printed 
Publications

Rejections will not be based on matters other than 
patents or printed publications, such as public use or 
sale, inventorship, 35 U.S.C. 101, fraud, etc. In this 
regard, see In re Lanham, 1 USPQ2d 1877 (Comm’r 
Pat. 1986), and Stewart Systems v. Comm’r of Patents 
and Trademarks, 1 USPQ2d 1879 (E.D. Va. 1986). A 
rejection on prior public use or sale, insufficiency of 
disclosure, etc., cannot be made even if it relies on a 
prior art patent or printed publication. Prior art patents 
or printed publications must be applied under an 
appropriate portion of 35 U.S.C. 102 and/or 103 when 
making a rejection.

C.Intervening Patents or Printed Publications

Rejections may be made in reexamination proceedings 
based on intervening patents or printed publications 
where the patent claims under reexamination are 
entitled only to the filing date of the patent and are not 
supported by an earlier foreign or United States patent 
application whose filing date is claimed. For example, 
under 35 U.S.C. 120, the effective date of these claims 
would be the filing date of the application which 
resulted in the patent. Intervening patents or printed 




 

publications are available as prior art under In re Ruscetta, 
255 F.2d 687, 118 USPQ 101 (CCPA 1958), and 
In re van Langenhoven, 458 F.2d 132, 173 USPQ 426 
(CCPA 1972). See also MPEP § 201.11.

D.Double Patenting



1.General Considerations

Double patenting is normally proper for consideration 
in reexamination. See In re Lonardo, 119 F.3d 
960, 43 
USPQ2d 1262 (Fed. Cir. 1997). In Lonardo, 
the Federal Circuit reviewed and interpreted the language 
of 35 U.S.C. 303 and stated that:

Since the statute in other places refers to prior art in relation 
to reexamination, see id., it seems apparent that Congress 
intended that the phrases ‘patents and publications’ 
and ‘other patents or printed publications’ in section 
303(a) not be limited to prior art patents or printed publications… 
. Finally, it is reasonable to conclude that Congress 
intended to include double patenting over a prior 
patent as a basis for reexamination because maintenance 
of a patent that creates double patenting is as much of an 
imposition on the public as maintenance of patent that is 
unpatentable over prior art. Thus, we conclude that the 
PTO was authorized during reexamination to consider the 
question of double patenting based upon the `762 patent.

In re Lonardo, 119 F.3d at 966, 43 USPQ2d at 1266. 
Accordingly, the issue of double patenting is appropriate 
for consideration in reexamination, both as a 
basis for ordering reexamination and during subsequent 
examination on the merits. The issue of double 
patenting is to be considered by the examiner when 
making the decision on the request for reexamination. 
The examiner should determine whether the issue of 
double patenting raises a substantial new question of 
patentability. The issue of double patenting is also to 
be considered during the examination stage of reexamination 
proceeding. In the examination stage, the 
examiner should determine whether a rejection based 
on double patenting is appropriate. 

See also Ex parte Obiaya, 227 USPQ 58, 60 (Bd. 
Pat. App. & Inter. 1985) (“Double patenting rejections 
are analogous to rejections under 35 U.S.C. 103 and 
depend on the presence of a prior patent as the basis 
for the rejection”).

See MPEP § 804 to § 804.03 for discussion on 
double patenting. 

2.Where Double Patenting May Be Present

Double patenting may exist where the patent being 
reexamined and a patent or application contain conflicting 
claims and:

(A)are filed by the same inventive entity; 

(B)are filed by different inventive entities having 
a common inventor; and/or

(C)are filed by a common assignee (common 
ownership); and/or

(D)result from activities undertaken within the 
scope of a joint research agreement as defined in 35 
U.S.C. 103(c)(3).

A double patenting rejection based on common 
ownership may be applied if the earlier invention 
would qualify as prior art for purposes of obviousness 
under 35 U.S.C. 103(a) only under 35 U.S.C. 
102(g), or under 35 U.S.C. 102(e) in a reexamination 
proceeding in which the patent under reexamination 
was granted on or after December 10, 2004; or 
in a reexamination proceeding in which the application 
which issued as a patent undergoing reexamination 
was filed on or after November 29, 1999. 



As is the case for an application, a judicially created 
double patenting rejection (made in a reexamination) 
can be overcome by the filing of a terminal 
disclaimer in accordance with 37 CFR 1.321(c). 
Where a terminal disclaimer is submitted in a reexamination 
proceeding, form paragraph 14.23.01 should 
be used if the terminal disclaimer is proper. If the terminal 
disclaimer is not proper, form paragraph 14.25should be used, and one or more of the appropriate 
form paragraphs 14.26 to 14.32 must follow form 
paragraph 14.25 to indicate why the terminal disclaimer 
is not accepted. See also MPEP § 1490.



3.Joint Research Agreement

Where the patent under reexamination issued on or 
after December 10, 2004, a double patenting rejection 
may be applied (assuming that the patent owner has 
not already filed the appropriate terminal disclaimer) 
if: 

(A)the patent under reexamination claims an 
invention that is not patentably distinct from an invention 
claimed in a non-commonly owned pending 




 

application or issued patent (i.e., not patentably distinct 
from an invention claimed in a “reference application 
or patent”);

(B)the patent being reexamined and the non-
commonly owned reference application or patent are 
by, or on behalf of, parties to a joint research agreement; 
and

(C)a statement has been filed under 37 CFR 
1.104(c)(4)(iii) to disqualify the non-commonly 
owned reference application or patent from being 
prior art under 35 U.S.C. 103(c)(2). 

Thus, the patent being reexamined and the subject 
matter disqualified under 35 U.S.C. 103(c), as 
amended by the CREATE Act, will be treated as commonly 
owned for purposes of double patenting analysis. 
Such a double patenting rejection will be made 
regardless of whether the patent being reexamined 
and the non-commonly owned reference patent or 
application have the same or a different inventive 
entity. This double patenting rejection may be obviated 
by filing a terminal disclaimer in accordance 
with 37 CFR 1.321(d). A double patenting rejection 
may NOT be made on this basis if the patent under 
reexamination issued before December 10, 2004.

E.Affidavits or Declarationsor Other Written 
Evidence

Affidavits or declarations or other written evidence 
which explain the contents or pertinent dates 
of prior art patents or printed publications in more 
detail may be considered in reexamination, but any 
rejection must be based upon the prior art patents or 
printed publications as explained by the affidavits or 
declarations or other written evidence. The rejection 
in such circumstances cannot be based on the 
affidavits or declarations or other written evidence
as such, but must be based on the prior art patents or 
printed publications.

F.Admissions; Use of Admissions

1.Initial Reexamination Determination and 
Order

The consideration under 35 U.S.C. 303 of a request 
for reexamination is limited to prior art patents and 
printed publications. See Ex parte McGaughey, 
6 
USPQ2d 1334, 1337 (Bd. Pat. App. & Inter. 1988). 
Thus an admission, per se, may not be the basis for 
establishing a substantial new question of patentability. 
However, an admission by the patent owner of 
record in the file or in a court record may be utilized 
in combination with a patent or printed publication.

2.Reexamination Ordered, Examination on the 
Merits

After reexamination has been ordered, the examination 
on the merits is dictated by 35 U.S.C. 305, see 
Ex parte McGaughey, 6 USPQ2d 1334, 1337 (Bd. 
Pat. App. & Inter. 1988).

Admissions by the patent owner in the record as to 
matters affecting patentability may be utilized in a 
reexamination proceeding; see 37 CFR 1.104(c)(3).

37 CFR 1.104(c)(3) provides that admissions by the 
patent owners as to matters affecting patentability 
may be utilized in a reexamination proceeding. The 
Supreme Court when discussing 35 U.S.C. 103 in 
Graham v. John Deere Co., 383 U.S. 6, 148 USPQ 
459 (1966) stated, inter alia, “the scope and content 
of the prior art are to be determined.” Accordingly, a 
proper evaluation of the scope and content of the prior 
art in determining obviousness would require a utilization 
of any “admission” by the patent owner which 
can be used to interpret or modify a patent or printed 
publication applied in a reexamination proceeding. 
This is true whether such admission results from a 
patent or printed publication or from some other 
source. An admission as to what is in the prior art is 
simply that, an admission, and requires no independent 
proof. It is an acknowledged, declared, conceded, 
or recognized fact or truth, Ex parte McGaughey, 
6 
USPQ2d 1334, 1337 (Bd. Pat. App. & Inter. 1988). 
While the scope and content of the admission may 
sometimes have to be determined, this can be done 
from the record and from the paper file or IFW file 
history in the same manner as with patents and 
printed publications. To ignore an admission by the 
patent owner, from any source, and not use the admission 
as part of the prior art in conjunction with patents 
and printed publications in reexamination would 
make it impossible for the examiner to properly determine 
the scope and content of the prior art as required 
by Graham, supra.

The Board of Appeals upheld the use of an admission 
in a reexamination proceeding in Ex parte Seiko 
Koko Kabushiki Kaisha, 225 USPQ 1260 (Bd. Pat. 
App. & Inter. 1984), Ex parte Kimbell, 226 USPQ 688 




 

(Bd. Pat. App. & Inter. 1985) and in Ex parte 
McGaughey, 6 USPQ2d 1334 (Bd. Pat. App. & Inter. 
1988). In Seiko, the Board relied on In re Nomiya, 
509 
F.2d 566, 184 USPQ 607 (CCPA 1975) holding 
an admission of prior art in the specification of the 
parent undergoing reexamination is considered prior 
art which may be considered as evidence of obviousness 
under 35 U.S.C. 103. In Kimbell, the Board 
referred to the patent specification and noted the 
admission by appellant that an explosion-proof housing 
was well known at the time of the invention. In Ex 
parte McGaughey, 6 USPQ2d 1334, 1337 (Bd. Pat. 
App. & Int. 1988), the Board held that any equivocal 
admission relating to prior art is a fact which is part 
of 
the scope and content of the prior art and that 
prior 
art admissions established in the record are to be 
considered in reexamination. An admission from any 
source can be used with respect to interpreting or 
modifying a prior art patent or printed publication, in 
a reexamination proceeding. The Board expressly 
overruled the prior Board decision in Ex parte Horton, 
226 USPQ 697 (Bd. Pat. App. & Inter. 1985) 
which held that admissions which are used as a basis 
for a rejection in reexamination must relate to patents 
and printed publications.

The admission can reside in the patent file (made of 
record during the prosecution of the patent application) 
or may be presented during the pendency of the 
reexamination proceeding or in litigation. Admissions 
by the patent owner as to any matter affecting 
patentability may be utilized to determine the scope 
and content of the prior art in conjunction with patents 
and printed publications in a prior art rejection, 
whether such admissions result from patents or 
printed publications or from some other source. An 
admission relating to any prior art (e.g., on sale, public 
use) established in the record or in court may be 
used by the examiner in combination with patents or 
printed publications in a reexamination proceeding. 
Any admission submitted by the patent owner is 
proper. A third party, however, may not submit admissions 
of the patent owner made outside the record. 
Such a submission would be outside the scope of 
reexamination.

G.Claim Interpretation and Treatment

Original patent claims will be examined only on the 
basis of prior art patents or printed publications 
applied under the appropriate parts of 35 U.S.C. 102and 103. See MPEP § 2217. During reexamination, 
claims are given the broadest reasonable interpretation 
consistent with the specification and limitations 
in the specification are not read into the claims (In re 
Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 
1984)). In a reexamination proceeding involving 
claims of an expired patent, claim construction pursuant 
to the principle set forth by the court in Phillips 
v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 
1321, 1329 (Fed. Cir. 2005) (words of a claim “are 
generally given their ordinary and customary meaning” 
as understood by a person of ordinary skill in the 
art in question at the time of the invention) should be 
applied since the expired claim are not subject to 
amendment. The statutory presumption of validity, 
35 U.S.C. 282, has no application in reexamination 
(In re Etter, 756 F.2d 852, 225 USPQ 1 (Fed. Cir. 
1985)).

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

Where new claims are presented or where any part 
of the disclosure is amended, the claims of the reexamination 
proceeding, are to be examined for compliance 
with 35 U.S.C. 112. Consideration of 35 U.S.C. 
112 issues should, however, be limited to the amendatory 
(e.g., new language) matter. For example, a claim 
which is amended or a new claim which is presented 
containing a limitation not found in the original patent 
claim should be considered for compliance under 
35 
U.S.C. 112 only with respect to that limitation. To 
go further would be inconsistent with the statute to the 
extent that 35 U.S.C. 112 issues would be raised as to 
matter in the original patent claim. Thus, a term in a 
patent claim which the examiner might deem to be too 
broad cannot be considered as too broad in a new or 
amended claim unless the amendatory matter in the 
new or amended claim creates the issue.

A.35 U.S.C. 112 Issues To Be Considered

Compliance of new or amended claims with the 
enablement and/or description requirements of the 
first paragraph of 35 U.S.C. 112 should be considered 
as to the amendatory and new text in the reexamination 
proceeding. Likewise, the examiner should determine 
whether the new or amended claims comply 
with the second paragraph of 35 U.S.C. 112. MPEP 




 

§
 
2163 - § 2173.05(v) provide extensive guidance as 
to these matters.

B.New Matter

35 U.S.C. 305 provides for examination under 
35 
U.S.C. 132, which prohibits the introduction of 
new matter into the 
disclosure. Thus, the question of 
new matter should be considered in a reexamination 
proceeding. See MPEP §
 
2163.06 as to the relationship 
of the written description requirement of the first 
paragraph of 35 U.S.C. 112 and the new matter prohibition 
under 35 U.S.C. 132. Where the new matter is 
added to the claims or affects claim limitations, the 
claims should be rejected under 35 U.S.C. 112, first 
paragraph, for failing to meet the written description 
requirement.

C.Amendment of the Specification

Where the specification is amended in a reexamination 
proceeding, the examiner should make certain 
that the requirements of 35 U.S.C. 112 are met. An 
amendment to the specification can redefine the scope 
of the terms in a claim such that the claim is no longer 
clear or is not supported by the specification. Thus, an 
amendment to the specification can result in the failure 
of the claims to comply with 35 U.S.C. 112, even 
where the claims are not amended in any respect.

III.CLAIMS IN PROCEEDING MUST NOT 
ENLARGE SCOPE OF THE CLAIMS OF 
THE PATENT

Where new or amended claims are presented or 
where any part of the disclosure is amended, the 
claims of the reexamination proceeding should be 
examined under 35 U.S.C. 305, to determine whether 
they enlarge the scope of the original claims. 
35 
U.S.C. 305 states that “no proposed amended or 
new claim enlarging the scope of the claims of the 
patent will be permitted in a reexamination proceeding...”.


A.Criteria for Enlargement of the Scope of the 
Claims

A claim presented in a reexamination proceeding 
“enlarges the scope” of the claims of the patent being 
reexamined where the claim is broader than each and 
every 
claim of the patent. See MPEP § 1412.03 for 
guidance as to when the presented claim is considered 
to be a broadening claim as compared with the claims 
of the 
patent, i.e., what is broadening and what is not. 
If a claim is 
considered to be a broadening claim for 
purposes of reissue, it is likewise considered to be a 
broadening claim in reexamination.

B.Amendment of the Specification

Where the specification is amended in a reexamination 
proceeding, the examiner should make certain 
that the amendment to the specification does not 
enlarge the scope of the claims of the patent. An 
amendment to the specification can enlarge the scope 
of the claims by redefining the scope of the terms in a 
claim, even where the claims are not amended in any 
respect. 

C.Rejection of Claims Where There Is Enlargement


Any claim in a reexamination proceeding which 
enlarges the scope of the claims of the patent should 
be rejected under 35 U.S.C. 305.

IV.OTHER MATTERS

A.Patent Under Reexamination Subject Of A 
Prior Office Or Court Decision

Where some of the patent claims in a patent being 
reexamined have been the subject of a prior Office or 
court decision, see MPEP § 2242. Where other pro





 

ceedings involving the patent are copending with the 
reexamination proceeding, see MPEP § 2282 - 
§
 
2286.

Patent claims not subject to reexamination because 
of their prior adjudication by a court should be identified. 
See MPEP § 2242. For handling a “live” claim 
dependent on a patent claim not subject to reexamination, 
see MPEP § 2260.01. All added claims will be 
examined.

Where grounds are set forth in a prior Office decision 
or Federal Court decision, which are not based on 
patents or printed publications and which clearly raise 
questions as to the validity of the claims, the examiner’s 
Office action should clearly state that the claims 
have not been examined as to those grounds not based 
on patents or printed publications that were stated in 
the prior decision. See 37 CFR 1.552(c). See In re 
Knight, 217 USPQ 294 (Comm’r Pat. 1982). 

B. “Live” Claims That Are Reexamined 
During Reexamination

The Office’s determination in both the order for 
reexamination and the examination stage of the reexamination 
will generally be limited solely to a review 
of the “live” claims (i.e., existing claims not held 
invalid by a final decision, after all appeals) for which 
reexamination has been requested. If the requester 
was interested in having all of the claims reexamined, 
requester had the opportunity to include them in its 
request for reexamination. However, if the requester 
chose not to do so, those claim(s) for which reexamination 
was not requested will generally not be reexamined 
by the Office. It is further noted that 35 U.S.C. 
302 requires that “[t]he request must set forth the pertinency 
and manner of applying cited prior art to 
every claim for which reexamination is requested.” If 
requester fails to apply the art to certain claims, 
requester is not statutorily entitled to reexamination of 
such claims. If a request fails to set forth the pertinency 
and manner of applying the cited art to any 
claim for which reexamination is requested as 
required by 37 CFR 1.510(b), that claim will generally 
not be reexamined. 

The decision to reexamine any claim for which 
reexamination has not been requested lies within the 
sole discretion of the Office, to be exercised based on 
the individual facts and situation of each individual 
case. If the Office chooses to reexamine any claim for 
which reexamination has not been requested, it is permitted 
to do so. In addition, the Office may always 
initiate a reexamination on its own initiative of the 
non-requested claim (35 U.S.C. 303(a)).

Similarly, if prior art patents or printed publications 
are discovered during reexamination which raise a 
substantial new question of patentability as to one or 
more patent claims for which reexamination has not 
been ordered (while reexamination has been ordered 
for other claims in the patent), then such claims may 
be added, within the sole discretion of the Office, during 
the examination phase of the proceeding.



C.Restriction Not Proper In Reexamination

Restriction requirements cannot be made in a reexamination 
proceeding since no statutory basis exists 
for restriction in a reexamination proceeding. Note 
also that the addition of claims to a “separate and distinct” 
invention to the patent would be considered as 
being an enlargement of the scope of the patent 
claims. See Ex parte Wikdahl, 10 
USPQ2d 1546 (Bd. 
Pat. App. & Inter. 1989). See MPEP § 1412.03.

D.Ancillary Matters

There are matters ancillary to reexamination which 
are necessary and incident to patentability which will 
be considered. Amendments may be made to the specification 
to correct, for example, an inadvertent failure 
to claim foreign priority or the continuing status of the 
patent relative to a parent application if such correction 
is necessary to overcome a reference applied 
against a claim of the patent.

E.Claiming Foreign And Domestic Priority In 
Reexamination

 The patent owner may obtain the right of foreign 
priority under 35 U.S.C. 119 (a)-(d) where a claim for 
priority had been made before the patent was granted, 
and it is only necessary for submission of the certified 
copy in the reexamination proceeding to perfect priority. 
Likewise, patent owner may obtain the right of 
foreign priority under 35 U.S.C. 119 (a)-(d) where it is 
necessary to submit for the first time both the claim 
for priority and the certified copy. However, where it 
is necessary to submit for the first time both the claim 
for priority and the certified copy, and the patent to be 
reexamined matured from a utility or plant application 




 

filed on or after November 29, 2000, then the patent 
owner must also file a grantable petition for an unintentionally 
delayed priority claim under 37 CFR 
1.55(c). See MPEP § 201.14(a).

 Also, patent owner may correct the failure to adequately 
claim (in the application for the patent reexamined) 
benefit under 35 U.S.C. 120 of an earlier 
filed copending U.S. patent application. For a patent 
to be reexamined which matured from a utility or 
plant application filed on or after November 29, 2000, 
the patent owner must file a grantable petition for an 
unintentionally delayed priority claim under 37 CFR 
1.78(a)(3). See MPEP § 201.11.

 For a patent to be reexamined which matured from 
a utility or plant application filed before November 
29, 2000, the patent owner can correct via reexamination 
the failure to adequately claim benefit under 35 
U.S.C. 119(e) of an earlier filed provisional application. 
Under no circumstances can a reexamination 
proceeding be employed to add or correct a benefit 
claim under 35 U.S.C. 119(e) for a patent matured 
from a utility or plant application filed on or after 
November 29, 2000. 

 Section 4503 of the American Inventor’s Protection 
Act of 1999 (AIPA) amended 35 U.S.C. 119(e)(1)
to state that:

No application shall be entitled to the benefit of an earlier 
filed provisional application under this subsection unless 
an amendment containing the specific reference to the 
earlier filed provisional application is submitted at such 
time during the pendency of the application as required by 
the Director. The Director may consider the failure to submit 
such an amendment within that time period as a 
waiver of any benefit under this subsection. The Director 
may establish procedures, including the payment of a surcharge, 
to accept an unintentionally delayed submission 
of an amendment under this section during the pendency 
of the application.

35 U.S.C. 119(e)(1), as amended by the AIPA, 
clearly prohibits the addition or correction of benefit 
claims under 35 U.S.C. 119(e) when the application is 
no longer pending, e.g., an issued patent. Therefore, a 
reexamination is not a valid mechanism for adding or 
correcting a benefit claim under 35 U.S.C. 119(e)
after a patent has been granted (for a patent matured 
from a utility or plant application filed on or after 
November 29, 2000).

No renewal of previously made claims for foreign 
priority under 35 
U.S.C. 119 or domestic benefit 
under 35 
U.S.C. 119(e) or 120, is necessary during 
reexamination. 

F. Correction Of Inventorship

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

G.Affidavits In Reexamination

Affidavits under 37 CFR 1.131 and 1.132 may be 
utilized in a reexamination proceeding. Note, however, 
that an affidavit under 37 CFR 1.131 may not be 
used to “swear back” of a reference patent if the reference 
patent is claiming the “same invention” as the 
patent undergoing reexamination. In such a situation, 
the patent owner may, if appropriate, seek to raise this 
issue via an affidavit under 37 CFR 1.130 (see MPEP 
§ 718) or in an interference proceeding via an appropriate 
reissue application if such a reissue application 
may be filed (see MPEP § 1449.02).

H. Issues Not Considered In Reexamination

If questions other than those indicated above (for 
example, questions of patentability based on public 
use or on sale, fraud, abandonment under 35 U.S.C. 
102(c), etc.) are raised by the third party requester or 
the patent owner during a reexamination proceeding, 
the existence of such questions will be noted by the 
examiner in an Office action, in which case the patent 
owner may desire to consider the advisability of filing 
a reissue application to have such questions considered 
and resolved. Such questions could arise in a 
reexamination requester’s 37 
CFR 1.510 request or in 
a 37 CFR 1.535 reply by the requester. Note form 
paragraph 22.03.

¶ 22.03 Issue Not Within Scope of Ex Parte Reexamination

It is noted that an issue not within the scope of reexamination 
proceedings has been raised. [1]. The issue will not be considered 
in a reexamination proceeding. 37 CFR 1.552(c). While this issue 
is not within the scope of reexamination, the patentee is advised 
that it may be desirable to consider filing a reissue application 




 

provided that the patentee believes one or more claims to be partially 
or wholly inoperative or invalid based upon the issue.

Examiner Note:

1.In bracket 1, identify the issues.

2.This paragraph may be used either when the patent owner or 
third party requester raises issues such as public use or on sale, 
fraud, or abandonment of the invention. Such issues should not be 
raised independently by the patent examiner.

If questions of patentability based on public use or 
on sale, fraud, abandonment under 35 U.S.C. 102(c), 
etc. are independently discovered by the examiner 
during a reexamination proceeding but were not 
raised by the third party requester or the patent owner, 
the existence of such questions will not be noted by 
the examiner in an Office action, because 37 CFR 
1.552(c) is only directed to such questions “raised by 
the patent owner or the third party requester.”

I.Request For Reexamination Filed On Patent 
After It Has Been Reissued

Where a request for reexamination is filed on a 
patent after it has been reissued, reexamination will be 
denied because the patent on which the request for 
reexamination is based has been surrendered. Should 
reexamination of the reissued patent be desired, a new 
request for reexamination including, and based on, the 
specification and claims of the reissue patent must be 
filed. 

 Any amendment made by the patent owner to 
accompany the initial reexamination request, or in 
later prosecution of the reexamination proceeding, 
should treat the changes made by the granted reissue 
patent as the text of the patent, and all bracketing and 
underlining made with respect to the patent as 
changed by the reissue.

Where the reissue patent issues after the filing of a 
request for reexamination, see MPEP §
 
2285.

===2258.01Use of Previously Cited/Considered Art in Rejections===

 In the examining stage of a reexamination proceeding, 
the examiner will consider whether the claims 
are 
subject to rejection based on art. Before making 
such a rejection, the examiner should check the 
patent’s file history to ascertain whether the art that 
will provide the basis for the rejection was previously 
cited/considered in an earlier concluded Office examination 
of the patent (e.g., in the examination of the 
application for the patent). For the sake of expediency, 
such art is referred to as “old art” throughout, since 
the term “old art” was coined by the Federal Circuit in 
its decision of In re Hiniker, 150 F.3d 1362, 1365-66, 
47 USPQ2d 1523, 1526 (Fed. Cir. 1998).

 If the rejection to be made by the examiner will be 
based on a combination of “old art” and art newly 
cited during the reexamination proceeding, the rejection 
is proper, and should be made. See In re Hiniker, 
150 F.3d at 1367, 47 USPQ2d at 1527. (Court held the 
reexamination proceeding was supported by a substantial 
new question of patentability where the rejection 
before the court was based on a combination of 
art that had been before the examiner during the original 
prosecution, and art newly cited during the reexamination 
proceeding.)

 If the “old art” provides the sole basis for a rejection, 
the following applies:

(A)Reexamination was ordered on or after 
November 2, 2002:

 For a reexamination that was ordered on or after 
November 2, 2002 (the date of enactment of Public 
Law 107-273; see Section 13105, of the Patent and 
Trademark Office Authorization Act of 2002), reliance 
solely on old art (as the basis for a rejection) 
does not necessarily preclude the existence of a substantial 
new question of patentability (SNQ) that is 
based exclusively on that old art. Determinations on 
whether a SNQ exists in such an instance shall be 
based upon a fact-specific inquiry done on a case-by-
case basis. For example, a SNQ may be based solely 
on old art where the old art is being presented/viewed 
in a new light, or in a different way, as compared with 
its use in the earlier concluded examination(s), in 
view of a material new argument or interpretation presented 
in the request.

(B)Reexamination was ordered prior to November 
2, 2002:

For a reexamination that was ordered prior to 
November 2, 2002, old art cannot (subject to the 
exceptions set forth below) be used as the sole basisfor a rejection.

 In determining the presence or absence of “a substantial 
new question of patentability” on which to 
base a rejection, the use of “old art” in a reexamination 
that was ordered prior to November 2, 2002, is 
controlled by In re Portola Packaging Inc., 110 F.3d 
786, 42 USPQ2d 1295 (Fed. Cir. 1997). (Note that 
Portola Packaging was decided based on the reexamination 
statute as it existed prior to the amendment by 
Public Law 107-273, Section 13105 of the Patent and 
Trademark Office Authorization Act of 2002). The 
amendment by Public Law 107-273, Section 13105, 
overruled the Portola Packaging decision for any 
reexamination that was ordered on or after November 
2, 2002. See In re Bass, 314 F.3d 575, 576-77, 65 
USPQ2d 1156, 1157 (Fed. Cir. 2002) where the Court 
stated in the sole footnote:

The following guidelines are provided for reviewing 
ongoing reexaminations ordered prior to November 
2, 2002, for compliance with the Portola 
Packaging decision.

On November 2, 2002, 35 U.S.C. 303(a) was 
amended by the passage of Pub. L. No. 107-273, 
13105, (116 Stat.) 1758, 1900, to add “[t]he existence 
of a substantial new question of patentability is not 
precluded by the fact that a patent or printed publication 
was previously cited by or to the Office or considered 
by the Office,” thereby overruling Portola 
Packaging. The following guidelines are provided for 
reviewing ongoing reexaminations ordered prior to 
November 2, 2002, for compliance with the Portola 
Packaging decision.

(1) General principles governing compliance 
with Portola Packaging for ongoing reexaminations 
ordered prior to November 2, 2002.

If prior art was previously relied upon to reject a 
claim in a concluded prior related Office proceeding, 
the Office will not conduct reexamination based only 
on such prior art. “Prior related Office proceedings” 
include the application which matured into the patent 
that is being reexamined, any reissue application for 
the patent, and any reexamination proceeding for the 
patent.

If prior art was not relied upon to reject a claim, 
but was cited in the record of a concluded prior 
related Office proceeding, and its relevance to the patentability 
of any claim was actually discussed on the 




 

record, the Office will not conduct reexamination 
based only on such prior art. The relevance of the 
prior art to patentability may have been discussed by 
either the applicant, patentee, examiner, or any third 
party. However, 37 CFR 1.2 requires that all Office 
business be transacted in writing. Thus, the Office 
cannot presume that a prior art reference was previously 
relied upon or discussed in a prior Office proceeding 
if there is no basis in the written record to so 
conclude other than the examiner’s initials or a check 
mark on a form  PTO/SB/08A or 08B, or PTO/SB/
42 (or on a form having a format equivalent to one of 
these forms) submitted with an information disclosure 
statement. Thus, any specific discussion of prior art 
must appear on the record of a prior related Office 
proceeding. Generalized statements such as the prior 
art is “cited to show the state of the art,” “cited to 
show the background of the invention,” or “cited of 
interest” would not preclude reexamination. 

 The Office may conduct reexamination based on 
prior art that was cited but whose relevance to patentability 
of the claims was not discussed in any prior 
related Office proceeding.

(2)Procedures for determining whether the 
prosecution of an ongoing reexamination must be terminated 
in compliance with Portola Packaging.

Office personnel must adhere to the following 
procedures when determining whether the prosecution 
of an ongoing reexamination should be terminated in 
compliance with the Federal Circuit’s decision in Portola 
Packaging.

(a)Ascertain that the order granting reexamination 
was mailed prior to November 2, 2002. If 
the order granting reexamination was not mailed prior 
to November 2, 2002, see above “Reexamination was 
ordered on or after November 2, 2002” for guidance.

(b)Prior to making any rejection in the 
ongoing reexamination, determine for any prior 
related Office proceeding what prior art was (i) relied 
upon to reject any claim, or (ii) cited and discussed.

(c)Base any and all rejections of the patent 
claims under reexamination at least in part on prior art 
that was, in any prior related Office proceeding, neither 
(i) relied upon to reject any claim, nor (ii) cited 
and its relevance to patentability of any claim discussed.


(d)Withdraw any rejections based only on 
prior art that was, in any prior related Office proceeding, 
previously either (i) relied upon to reject any 
claim, or (ii) cited and its relevance to patentability of 
any claim discussed.

(e)Terminate the prosecution of any reexamination 
in which the only remaining rejections are 
entirely based on prior art that was, in any prior 
related Office proceeding, previously (i) relied upon 
to reject any claim, and/or (ii) cited and its relevance 
to patentability of a claim discussed. 

The Director of the USPTO may conduct a 
search for new art to determine whether a substantial 
new question of patentability exists prior to terminating 
the prosecution of any ongoing reexamination 
proceeding. See 35 U.S.C. 303. See also 35 U.S.C. 
305 (indicating that “reexamination will be conducted 
according to the procedures established for initial 
examination,” thereby suggesting that the Director of 
the USPTO may conduct a search during an ongoing 
reexamination proceeding).

(3)Application of Portola Packaging to 
unusual fact patterns.

The Office recognizes that each case must be 
decided on its particular facts and that cases with 
unusual fact patterns will occur. In such a case, the 
reexamination should be brought to the attention of 
the Central Reexamination Unit (CRU) or Technology 
Center (TC) Director who will then determine the 
appropriate action to be taken.

 Unusual fact patterns may appear in cases in which 
prior art was relied upon to reject any claim or cited 
and discussed with respect to the patentability of a 
claim in a prior related Office proceeding, but other 
evidence clearly shows that the examiner did not 
appreciate the issues raised in the reexamination 
request or the ongoing reexamination with respect to 
that art. Such other evidence may appear in the reexamination 
request, in the nature of the prior art, in the 
prosecution history of the prior examination, or in an 
admission by the patent owner, applicant, or inventor. 
See 37 CFR 1.104(c)(3).

The following examples are intended to be illustrative 
and not inclusive.

 For example, if a textbook was cited during prosecution 
of the application which matured into the 
patent, the record of that examination may show that 
only select information from the textbook was discussed 
with respect to the patentability of the claims. 
The file history of the prior Office proceeding should 




 

indicate which portion of the textbook was previously 
considered. See 37 CFR 1.98(a)(2)(ii) (an information 
disclosure statement must include a copy of each 
“publication or that portion which caused it to be 
listed”). If a subsequent reexamination request relied 
upon other information in the textbook that actually 
teaches what is required by the claims, it may be 
appropriate to rely on this other information in the 
textbook to order and/or conduct reexamination. 
However, a reexamination request that merely provides 
a new interpretation of a reference already previously 
relied upon or actually discussed by the Office 
does not create a substantial new question of patentability.


 Another example involves the situation where 
an 
examiner discussed a reference in a prior Office 
proceeding, but did not either reject a claim based 
upon the reference or maintain the rejection based on 
the mistaken belief that the reference did not qualify 
as prior art. For example, the examiner may not have 
believed that the reference qualified as prior art 
because: (i) the reference was undated or was believed 
to have a bad date; (ii) the applicant submitted a declaration 
believed to be sufficient to antedate the reference 
under 37 CFR 1.131; or (iii) the examiner 
attributed an incorrect filing date to the claimed 
invention. If the reexamination request were to 
explain how and why the reference actually does 
qualify as prior art, it may be appropriate to rely on 
the reference to order and/or conduct reexamination. 
For example, the request could: (i) verify the date of 
the reference; (ii) undermine the sufficiency of the 
declaration filed under 37 CFR 1.131; or (iii) explain 
the correct filing date accorded a claim. See e.g., 
Heinl v. Godici, 143 F. Supp.2d 593 (E.D.Va. 2001) 
(reexamination on the basis of art previously presented 
without adequate proof of date may proceed if 
prior art status is now established).

Another example involves foreign language prior 
art references. If a foreign language prior art reference 
was cited and discussed in any prior Office proceeding 
but the foreign language prior art reference 
was 
never completely and accurately translated into 
English during the original prosecution, Portola 
Packaging may not prohibit reexamination over a 
complete and accurate translation of that foreign language 
prior art reference. Specifically, if a reexamination 
request were to explain why a more complete and 
accurate translation of that same foreign language 
prior art reference actually teaches what is required by 
the patent claims, it may be appropriate to rely on the 
foreign language prior art reference to order and/or 
conduct reexamination.

 Another example of an unusual fact pattern 
involves cumulative references. To the extent that a 
cumulative reference is repetitive of a prior art reference 
that was previously applied or discussed, Portola 
Packaging may prohibit reexamination of the patent 
claims based only on the repetitive reference. For purposes 
of reexamination, a cumulative reference that is 
repetitive is one that substantially reiterates verbatim 
the teachings of a reference that was either previously 
relied upon or discussed in a prior Office proceeding 
even though the title or the citation of the reference 
may be different. However, it is expected that a repetitive 
reference which cannot be considered by the 
Office during reexamination will be a rare occurrence 
since most references teach additional information or 
present information in a different way than other references, 
even though the references might address the 
same general subject matter.

(4)Notices regarding compliance with Portola 
Packaging.

(a)If the prosecution of an ongoing reexamination 
is terminated under (2)(e) above in order to 
comply with the Federal Circuit’s decision in Portola 
Packaging, the Notice of Intent to Issue Ex ParteReexamination Certificate should state: 

“The prosecution of this reexamination is terminated 
based on In re Portola Packaging, Inc., 
110 
F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997). No 
patentability determination has been made in this 
reexamination proceeding.”

(b)If a rejection in the reexamination has previously 
been issued and that rejection is withdrawn 
under (2)(d) above in order to comply with the Federal 
Circuit’s decision in Portola Packaging, the 
Office action withdrawing such rejection should state: 

“The rejection(s) based upon _______is/are 
withdrawn in view of In re Portola Packaging, Inc., 
110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997). No 
patentability determination of the claims of the patent 
in view of such prior art has been made in this reexamination 
proceeding.”




 

==2259 Res Judicata and Collateral Estoppel in Reexamination Proceedings==

MPEP § 2242 and § 2286 relate to the Office policy 
controlling the determination on a request for reexamination 
and the subsequent examination phase of the 
reexamination where there has been a Federal Court 
decision on the merits 
as to the patent for which reexamination 
is requested. 

Since claims finally held invalid by a Federal 
Court, after all appeals, will be withdrawn from 
consideration and not reexamined during a reexamination 
proceeding, a rejection on the grounds of 
res judicata will not be appropriate in reexamination. 
In situations, where the issue decided in Court did not 
invalidate claims, but applies in one or more 
respects 
to the claims being reexamined, the doctrine 
of collateral estoppel may be applied in reexamination 
to resolve the issue.

==2260 Office Actions==

37 CFR 1.104. Nature of examination.

(a)Examiner’s action.

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

(2)The applicant, or in the case of a reexamination proceeding, 
both the patent owner and the requester, will be notified 
of the examiner’s action. The reasons for any adverse action or 
any objection or requirement will be stated in an Office action and 
such information or references will be given as may be useful in 
aiding the applicant, or in the case of a reexamination proceeding 
the patent owner, to judge the propriety of continuing the prosecution.


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

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

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

(c)Rejection of claims.

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

(2)In rejecting claims for want of novelty or for obviousness, 
the examiner must cite the best references at his or her command. 
When a reference is complex or shows or describes 
inventions other than that claimed by the applicant, the particular 
part relied on must be designated as nearly as practicable. 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 upon 
admissions by the applicant, or the patent owner in a reexamination 
proceeding, as to any matter affecting patentability and, insofar 
as rejections in applications are concerned, may also rely upon 
facts within his or her knowledge pursuant to paragraph (d)(2) of 
this section.

(4)Subject matter which is developed by another person 
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 against a claimed 
invention unless the entire rights to the subject matter and the 
claimed invention were commonly owned by the same person or 
subject to an obligation of assignment to the same person at the 
time the claimed invention was made.

(5)The claims in any original application naming an 
inventor will be rejected as being precluded by a waiver in a published 
statutory invention registration naming that inventor if the 
same subject matter is claimed in the application and the statutory 
invention registration. The claims in any reissue application naming 
an inventor will be rejected as being precluded by a waiver in 
a published statutory invention registration naming that inventor if 
the reissue application seeks to claim subject matter:

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

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

(d)Citation of references.

(1)If domestic patents are cited by the examiner, their 
numbers and dates, and the names of the patentees will be stated. 
If domestic patent application publications are cited by the examiner, 
their publication number, publication date, and the names of 
the applicants will be stated. If foreign published applications 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 to enable the applicant, or 
in the case of a reexamination proceeding, the patent owner, to 
identify the published applications or patents cited. In citing foreign 
published applications or patents, in case only a part of the 
document is involved, the particular pages and sheets containing 
the parts relied upon will be identified. If printed publications are 




 

cited, the author (if any), title, date, pages or plates, and place of 
publication, or place where a copy can be found, will be given.

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

(e)Reasons for allowance. If the examiner believes that the 
record of the prosecution as a whole does not make clear his or her 
reasons for allowing a claim or claims, the examiner may set forth 
such reasoning. The reasons shall be incorporated into an Office 
action rejecting other claims of the application or patent under 
reexamination or be the subject of a separate communication to 
the applicant or patent owner. The applicant or patent owner may 
file a statement commenting on the reasons for allowance within 
such time as may be specified by the examiner. Failure by the 
examiner to respond to any statement commenting on reasons for 
allowance does not give rise to any implication.

It is intended that the examiner’s first ex parteaction on the merits be the primary action to establish 
the issues which exist between the examiner and the 
patent owner insofar as the patent is concerned. At the 
time the first action is issued, the patent owner has 
already been permitted to file a statement and an 
amendment pursuant to 37 
CFR 1.530; and the reexamination 
requester, if the requester is not the patent 
owner, has been permitted to reply thereto pursuant to 
37 CFR 1.535. Thus, at this point, the issues should be 
sufficiently focused to enable the examiner to make a 
definitive first ex parte action on the merits which 
should clearly establish the issues which exist 
between the examiner and the patent owner insofar as 
the patent is concerned. In view of the fact that the 
examiner’s first action will clearly establish the 
issues, the first action should include a statement cautioning 
the patent owner that a complete response 
should be made to the action since the next action is 
expected to be a final action. The first action should 
further caution the patent owner that the requirements 
of 37 CFR 1.116(b) will be strictly enforced after final 
action and that any amendment after a final action 
must include “a showing of good and sufficient reasons 
why the amendment is necessary and was not 
earlier presented” in order to be considered. The language 
of form paragraph 22.04 is appropriate for 
inclusion in the first Office action:

¶ 22.04 Papers To Be Submitted in Response to Action - Ex 
Parte Reexamination

In order to ensure full consideration of any amendments, affidavits 
or declarations, or other documents as evidence of patentability, 
such documents must be submitted in response to this 
Office action. Submissions after the next Office action, which is 
intended to be a final action, will be governed by the requirements 
of 37 CFR 1.116 after final rejection and 37 CFR 41.33 after 
appeal, which will be strictly enforced.

===2260.01 Dependent Claims===

If  an unamended base patent claim (i.e., a 
claim appearing in the reexamination as it appears in 
the patent) has been rejected or canceled, any claim 
which is directly or indirectly dependent thereon 
should be confirmed or allowed if the dependent 
claim is otherwise allowable. The dependent claim 
should not be objected to or rejected merely because it 
depends on a rejected or canceled patent claim. No 
requirement should be made for rewriting the dependent 
claim in independent form. As the original patent 
claim numbers are not changed in a reexamination 
proceeding, the content of the canceled base claim 
would remain in the printed patent and would be 
available to be read as a part of the confirmed or 
allowed dependent claim.

If a new base claim (a base claim other than a base 
claim appearing in the patent) has been canceled in a 
reexamination proceeding, a claim which depends 
thereon should be rejected as indefinite. If a new 
base claim or an amended patent claim is rejected, 
a claim dependent thereon should be objected to if it 
is otherwise patentable and a requirement made for 
rewriting the dependent claim in independent form.

==2261 Special Status for Action==

35 U.S.C. 305. Conduct of reexamination proceedings.



All reexamination proceedings under this section, including 
any appeal to the Board of Patent Appeals and Interferences, will 
be conducted with special dispatch within the Office.

In view of the requirement for “special dispatch,” 
reexamination proceedings will be “special” throughout 
their pendency in the Office. The examiner’s first 
action on the merits should be completed within 
1 
month of the filing date of the requester’s reply 
(37 
CFR 1.535), or within 1 
month of the filing date 
of the patent owner’s statement (37 CFR 1.530) if 
there is no requester other than the patent owner. If no 
submissions are made under either 37 CFR 1.530 or 
37 CFR 1.535, the first action on the merits should be 
completed within 1 month of any due date for such 




 

submission. Mailing of the first action should occur 
within 6 WEEKS after the appropriate filing or due 
date of any statement and any reply thereto.

Any cases involved in litigation, whether they are..
reexamination proceedings or reissue applications, 
will have priority over all other cases. Reexamination 
proceedings not involved in litigation will have priority 
over all other cases except reexaminations or reissues 
involved in litigation.

==2262 Form and Content of Office Action==

The examiner’s first Office action will be a statement 
of the examiner’s position and should be so 
complete that the second Office action can properly 
be made a final action. See MPEP § 2271.

All Office actions are to be  typed. The first 
Office action must be sufficiently detailed that the 
pertinency and manner of applying the cited prior art 
to the claims is clearly set forth therein. Where the 
request for reexamination includes material such as a 
claim chart to explain a proposed rejection in order to 
establish the existence of a substantial new question 
of patentability, the examiner may cut and paste the 
claim chart (or other material) to incorporate it within 
the body of the Office action. The examiner must, 
however, carefully review the claim chart (or other 
material) to ensure that any items incorporated in a 
statement of the rejection clearly and completely 
address the patentability of the claims. For actions 
subsequent to the first Office action, the examiner 
must be careful to additionally address all patent 
owner responses to previous actions. If the examiner 
concludes in any Office action that one or more of the 
claims are patentable over the cited patents or printed 
publications, the examiner should indicate why the 
claim(s) is clearly patentable in a manner similar to 
that used to indicate reasons for allowance (MPEP § 
1302.14). If the record is clear why the claim(s) is/are 
clearly patentable, the examiner may refer to the particular 
portions of the record which clearly establish 
the patentability of the claim(s). The first action 
should also respond to the substance of each argument 
raised by the patent owner and requester pursuant to 
37 CFR 1.510, 1.530, and 1.535. If arguments are 
presented which are inappropriate in reexamination, 
they should be treated in accordance with 37 CFR 
1.552(c). It is especially important that the examiner’s 
action in reexamination be thorough and complete in 
view of the finality of a reexamination proceeding and 
the patent owner’s inability to file a continuation proceeding. 


Normally, the title will not need to be changed during 
reexamination. If a change of the title is necessary, 
patent owner should be notified of the need to provide 
an amendment changing the title as early as possible 
in the prosecution as a part of an Office Action. If all 
of the claims are found to be patentable and a Notice 
of Intent to Issue Ex Parte Reexamination Certificate 
has been or is to be mailed, a change to the title of the 
invention by the examiner may only be done by a formal 
Examiner’s Amendment. Changing the title and 
merely initialing the change is NOT permitted in 
reexamination.



I.PANEL REVIEW CONFERENCE

After an examiner has determined that the reexamination 
proceeding is ready for an Office action, the 
examiner will formulate a draft preliminary Office 
action. The examiner will then inform his/her Special 
Program Examiner (SPRE) of his/her intent to issue 
the Office action. The SPRE will convene a panel 
review conference, and the conference members will 
review the patentability of the claim(s) pursuant to 
MPEP § 2271.01. If the conference confirms the 
examiner’s preliminary decision to reject and/or allow 
the claims, the proposed Office action shall be issued 
and signed by the examiner, with the two other conferees 
initialing the action (as “conferee”) to indicate 
their presence in the conference. If the conference 
does not confirm the examiner’s treatment of the 
claims, the examiner will reevaluate and issue an 
appropriate Office action.

II.SAMPLE OFFICE ACTION

A sample of a first Office action in a reexamination 
proceeding is set forth below.




 

Form PTOL-465. Ex Parte Reexamination Communication Transmittal FormForm PTOL-465. Ex Parte Reexamination Communication Transmittal Form





 

Form PTOL-466. Office Action in Ex Parte Reexamination Form PTOL-466. Office Action in Ex Parte Reexamination 





 

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. 1999). Claims 1 - 3 were held not valid by the Court.

The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set 
forth in this Office action:

A patent may not be obtained though the invention is not identically disclosed or described 
as set forth in section 102 of this title, if the differences between the subject matter sought 
to be patented and the prior art are such that the subject matter as a whole would have been 
obvious at the time the invention was made to a person having ordinary skill in the art to 
which said subject matter pertains. Patentability shall not be negatived by the manner in 
which the invention was made.

Subject matter developed by another person, which qualifies as prior art only under one or 
more of subsections (f) or (g) of section 102 of this title, shall not preclude patentability 
under this section where the subject matter and the claimed invention were, at the time the 
invention was made, owned by the same person, or subject to an obligation of assignment 
to the same person.


Claims 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Berridge in view of McGee.

Berridge teaches extruding a chlorinated polymer using the same extrusion structure recited in Claims 4 
and 6 of the Smith patent. However, Berridge does not show supporting the extrusion barrel at 30 
degrees to the horizontal, using spring supports. McGee teaches spring supporting an extrusion barrel at 
an angle of 25 - 35 degrees, in order to decrease imperfections in extruded chlorinated polymers. It 
would have been obvious to one of ordinary skill in the polymer extrusion art to support the extrusion 
barrel of Berridge on springs and at an angle of 30 degrees because McGee teaches this to be known in 
the polymer extrusion art for decreasing imperfections in extruded chlorinated polymers.

Claim 5 is patentable over the prior art patents and printed publications because of the specific extrusion 
die used with the Claim 4 spring-supported barrel. This serves to even further reduce imperfections in 
the extruded chlorinated polymers and is not taught by the art of record, alone or in combination.

It is noted that an issue not within the scope of reexamination proceedings has been raised. In the above-
cited final Court decision, a question is raised as to the possible public use of the invention of Claim 6. 
This question was also raised by the requester in the reply to the owner’s statement. The issue will not 
be considered in a reexamination proceeding (37 CFR 1.552(c)). While this issue is not within the scope 
of the reexamination, the patentee is advised that it may be desirable to consider filing a reissue application 
provided that the patentee believes one or more claims to be partially or wholly inoperative or 
invalid based upon the issue.

Swiss Patent 80555 and the American Machinist article are cited to show cutting and forming extruder 
apparatus somewhat similar to that claimed in the Smith patent.








 

In order to ensure full consideration of any amendments, affidavits, or declarations, or other documents 
as evidence of patentability, such documents must be submitted in response to this Office action. Submissions 
after the next Office action, which is intended to be a final action, will be governed by the 
requirements of 37 CFR 1.116 after final rejection and 37 CFR 41.33 after appeal which will be strictly 
enforced.

All correspondence relating to this ex parte reexamination proceeding should be directed:

By Mail to:

Mail Stop Ex Parte 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

Any inquiry concerning this communication should be directed to Kenneth Schor at telephone number 
(571) 272-0000.

Kenneth M. Schor

Kenneth M. Schor

Primary Examiner

Art Unit 3725

ARIConferee

BZConferee








 

Form PTO/SB/42. 37 CFR 1.501 Information Disclosure Citation in a PatentForm PTO/SB/42. 37 CFR 1.501 Information Disclosure Citation in a Patent





 

==2263 Time for Response==

A shortened statutory period of 2 months will be set 
for response to Office actions in reexaminations, 
except as follows. Where the reexamination 
results from a court order or litigation is stayed for 
purposes of reexamination,  the shortened statutory 
period will be set at 1 month. In addition, if (A) there 
is litigation concurrent with an ex parte reexamination 
proceeding and (B) the reexamination proceeding has 
been pending for more than one year, the Director or 
Deputy Director of the Office of Patent Legal Administration 
(OPLA), Director of the Central Reexamination 
Unit (CRU), Director of the Technology Center 
(TC) in which the reexamination is being conducted, 
or a Senior Legal Advisor of the OPLA, may approve 
Office actions in such reexamination proceeding setting 
a one-month or thirty days, whichever is longer, 
shortened statutory period for response rather than the 
two 
months usually set in reexamination proceedings. 
A statement at the end of the Office action – “One 
month or thirty days, whichever is longer, shortened 
statutory period approved,” followed by the signature 
of one of these officials, will designate such 
approval. See MPEP § 2286. Note, however, that 
this 1-month policy does NOT apply to the 2-month 
period for the 
filing of a statement under 37 
CFR 
1.530, which 2-month period is set by 35 U.S.C. 304.

Where a reexamination proceeding has been stayed 
because of a copending reissue application, and the 
reissue application is abandoned, all actions in the 
reexamination after the stay has been removed will set 
a 1-month shortened statutory period unless a longer 
period for response is clearly warranted by nature of 
the examiner’s action; see MPEP § 2285.

==2264 Mailing of Office Action==

Ex Parte reexamination forms are structured so that 
the PALM printer can be used to print the identifying 
information for the reexamination file and the mailing 
address — usually the address of the patent owner’s 
legal representative. Where there is no legal representative, 
the patent owner’s address is printed. Only the 
first patent owner’s address is printed where there are 
multiple patent owners. A transmittal form PTOL-465 
is also provided for each partial patent owner in addition 
to the one named on the top of the Office action. 

All actions in a third party requester ex parte reexamination 
will have a copy mailed to the third party 
requester. A transmittal form PTOL-465 must be used 
in providing the third party requester with a copy of 
each Office action.

A completed transmittal form PTOL-465 will be 
provided as needed for any third party requester and 
additional partial patent owner (discussed above), and 
the appropriate address will be entered on it. The 
number of transmittal forms provides a ready reference 
for the number of copies of each Office action to 
be made, and the transmittal form permits use of the 
window envelopes in mailing the copies of the action 
to parties other than the patent owner.

 

==2265 Extension of Time==

37 CFR 1.550. Conduct of ex parte reexamination 
proceedings.



(c)The time for taking any action by a patent owner in an ex 
parte reexamination proceeding will be extended only for sufficient 
cause and for a reasonable time specified. Any request for 
such extension must be filed on or before the day on which action 
by the patent owner is due, but in no case will the mere filing of a 
request effect any extension. Any request for such extension must 
be accompanied by the petition fee set forth in § 1.17(g). See § 
1.304(a) for extensions of time for filing a notice of appeal to the 
U.S. Court of Appeals for the Federal Circuit or for commencing a 
civil action.



The provisions of 37 CFR 1.136 (a) and (b) are 
NOT applicable to ex parte reexamination proceedings 
under any circumstances. Public Law 97-247 
amended 35 
U.S.C. 41 to authorize the Director to 
provide for extensions of time to take action which do 
not require a reason for the extension in an “application.” 
An ex parte reexamination proceeding does not 
involve an “application.” 37 CFR 1.136 authorizes 
extensions of the time period only in an application in 
which an applicant must respond or take action. There 
is neither an “application,” nor an “applicant” 
involved in a reexamination proceeding. 

An extension of time in an ex parte reexamination 
proceeding is requested pursuant to 37 CFR 1.550(c). 
Accordingly, a request for an extension (A) must be 
filed on or before the day on which action by the 
patent owner is due and (B) must set forth sufficient 




 

reason for the extension, and (C) must be accompanied 
by the petition fee set forth in 37 CFR 1.17(g). 
Requests for an extension of time in an ex parte reexamination 
proceeding will be considered only after 
the decision to grant or deny reexamination is mailed. 
Any request filed before that decision will be denied. 

The certificate of mailing and the certificate of 
transmission procedures (37 CFR 1.8) and the 
“Express Mail” mailing procedure (37 CFR 1.10) may 
be used to file a request for extension of time, as well 
as any other paper in a pending ex parte reexamination 
proceeding (see MPEP § 2266).

With the exception of an automatic 1-month extension 
of time to take further action which will be 
granted upon filing a first timely response to a final 
Office action (see MPEP §
 
2272), all requests for 
extensions of time to file a patent owner statement 
under 37 CFR 1.530 or respond to any subsequent 
Office action in an ex parte reexamination proceeding 
must be filed under 37 CFR 1.550(c) and will be 
decided by the Director of the Central Reexamination 
Unit (CRU) or Technology Center (TC) conducting 
the reexamination proceeding. These requests 
for an extension of time will be granted only for sufficient 
cause and must be filed on or before the day on 
which action by the patent owner is due. In no case, 
other than the “after final” practice set forth immediately 
above, will mere filing of a request for extension 
of time automatically effect any extension. Evaluation 
of whether sufficient cause has been shown for an 
extension must be made in the context of providing 
the patent owner with a fair opportunity to present an 
argument against any attack on the patent, and the 
requirement of the statute (35 U.S.C. 305) that the 
proceedings be conducted with special dispatch. 

Any request for an extension of time in a reexamination 
proceeding must fully state the reasons therefor. 
The reasons must include (A) a statement of 
what action the patent owner has taken to provide a 
response, to date as of the date the request for extension 
is submitted, and (B) why, in spite of the action 
taken thus far, the requested additional time is needed. 
The statement of (A) must provide a factual accounting 
of reasonably diligent behavior by all those 
responsible for preparing a response to the outstanding 
Office action within the statutory time period.
All requests must be submitted in a separate paper 
which will be forwarded to the CRU or TC Director 
for action. A request for an extension of the time 
period to file a petition from the denial of a request for 
reexamination can only be entertained by filing a petition 
under 37 
CFR 1.183 with appropriate fee to 
waive the time provisions of 37 CFR 1.515(c). Since 
the reexamination examination process (for a reexamination 
request filed under 35 U.S.C. 302 and 37 CFR 
1.510) is intended to be essentially ex parte, the party 
requesting reexamination can anticipate that requests 
for an extension of time to file a petition under 37 
CFR 1.515(c) will be granted only in extraordinary 
situations.

The time period for filing a third party requester 
reply under 37 
CFR 1.535 to the patent owner’s statement 
(i.e., 2 months from the date of service of the 
statement on the third party requester) cannot be 
extended under any circumstances. No extensions will 
be permitted to the time for filing a reply under 37 
CFR 1.535 by the requester because the 2-month 
period for filing the reply is a statutory period. 35 
U.S.C. 304. It should be noted that a statutory period 
for response cannot be waived. See MPEP §
 
2251. 

Ex parte prosecution will be conducted by initially 
setting either a 1-month or a 2-month shortened 
period for response, see MPEP § 2263. The patent 
owner also will be given a 2-month statutory period 
after the order for reexamination to file a statement. 
See 37 CFR 1.530(b). First requests for extensions of 
these statutory time periods will be granted for sufficient 
cause, and for a reasonable time specified — 
usually 1 month. The reasons stated in the request will 
be evaluated by the CRU or TC Director, and the 
requests will be favorably considered where there is a 
factual accounting of reasonably diligent behavior by 
all those responsible for preparing a response within 
the statutory time period. Second or subsequent 
requests for extensions of time or requests for more 
than 1 
month will be granted only in extraordinary situations. 
Any request for an extension of time in a 
reexamination proceeding to file a notice of appeal to 
the Board of Patent Appeals and Interferences, a brief 
or reply brief, or a request for reconsideration or 
rehearing will be considered under the provisions of 
37 CFR 1.550(c). The time for filing the notice and 
reasons of appeal to the U.S. Court of Appeals for the 
Federal Circuit or for commencing a civil action will 
be considered under the provisions of 37 CFR 1.304.

I.FINAL ACTION — TIME FOR RESPONSE


The after-final practice in reexamination proceedings 
did not change on October 1, 1982 (at which time 
a change in practice was made for applications), and 
the automatic extension of time policy for response to 
a final rejection and associated practice are still in 
effect in reexamination proceedings.

The filing of a timely first response to a final rejection 
having a shortened statutory period for response 
is construed as including a request to extend the shortened 
statutory period for an additional month, which 
will be granted even if previous extensions have been 
granted, but in no case may the period for response 
exceed 6 months from the date of the final action. 
Even if previous extensions have been granted, the 
primary examiner is authorized to grant the request 
for extension of time which is implicit in the filing of 
a timely first response to a final rejection. It should be 
noted that the filing of any timely first response to a 
final rejection will be construed as including a request 
to extend the shortened statutory period for an additional 
month, even an informal response and even a 
response that is not signed. An object of this practice 
is to obviate the necessity for appeal merely to gain 
time to consider the examiner’s position in reply to an 
amendment timely filed after final rejection. Accordingly, 
the shortened statutory period for response to a 
final rejection to which a proposed first response has 
been received will be extended 1 month. Note that the 
Office policy of construing a response after final as 
inherently including a request for a 1-month extension 
of time applies only to the first response to the final 
rejection. This automatic 1-month extension of time 
does not apply once the Notice of Appeal has been 
filed. In that instance, the patent owner will be notified 
that an appeal brief is due two months from the 
date of the notice of appeal to avoid dismissal of the 
appeal, and extensions of time are governed by 
37 
CFR 1.550(c). 

It should be noted that the patent owner is entitled 
to know the examiner’s ruling on a timely response 
filed after final rejection before being required to file 
a notice of appeal. Notification of the examiner’s ruling 
should reach the patent owner with sufficient time 
for the patent owner to consider the ruling and act on 
it.

Normally, examiners will complete a response to an 
amendment after final rejection within 5 days after 
receipt thereof. In those situations where the advisory 
action cannot be mailed in sufficient time for the 
patent owner to consider the examiner’s position with 
respect to the amendment after final rejection (or 
other patent owner paper) and act on it before termination 
of the prosecution of the proceeding, the granting 
of additional time to complete the response to the 
final rejection or to take other appropriate action 
would be appropriate. See Theodore Groz & Sohne & 
Ernst Bechert Nadelfabrik KG v. Quigg, 10 USPQ2d 
1787 (D.D.C. 1988). The additional time should be 
granted by the examiner, and the time granted should 
be set forth in the advisory Office action. The advisory 
action form, Ex Parte Reexamination Advisory 
Action Before the Filing of an Appeal Brief (PTOL-
467), states that “THE PERIOD FOR RESPONSE IS 
EXTENDED TO RUN ___ MONTHS FROM THE 
MAILING DATE OF THE FINAL REJECTION.” 
The blank before “MONTHS” should be filled in with 
an integer (2, 3, 4, 5, or 6); fractional months should 
not be indicated. In no case can the period for reply to 
the final rejection be extended to exceed 6 months 
from the mailing date of the final rejection. An appropriate 
response (e.g., a second or subsequent amendment 
or a notice of appeal) must be filed within the 
extended period for response. If patent owner elects 
to file a second or subsequent amendment, it must 
place the reexamination in condition for allowance. If 
the amendment does not place the reexamination in 
condition for allowance, the prosecution of the reexamination 
proceeding will stand terminated under 
37 
CFR 1.550(d) unless an appropriate notice of 
appeal was filed before the expiration of the response 
period.




 

II.EXTENSIONS OF TIME TO SUBMIT AFFIDAVITS 
AFTER FINAL REJECTION

Frequently, patent owners request an extension of 
time, stating as a reason therefor that more time is 
needed in which to submit an affidavit. When such a 
request is filed after final rejection, the granting of the 
request for extension of time is without prejudice to 
the right of the examiner to question why the affidavit 
is now necessary and why it was not earlier presented. 
If the patent owner’s showing is insufficient, the 
examiner may deny entry of the affidavit, notwithstanding 
the previous grant of an extension of time to 
submit it. The grant of an extension of time in these 
circumstances serves merely to keep the prosecution 
of the proceeding from becoming terminated while 
allowing the patent owner the opportunity to present 
the affidavit or to take other appropriate action. Moreover, 
prosecution of the reexamination to save it from 
termination must include such timely, complete and 
proper action as required by 37 CFR 1.113. The 
admission of the affidavit for purposes other than 
allowance of the claims, or the refusal to admit the 
affidavit, and any proceedings relative, thereto, shall 
not operate to save the prosecution of the proceeding 
from termination.

Implicit in the above practice is the fact that affidavits 
submitted after final rejection are subject to the 
same treatment as amendments submitted after final 
rejection. See In re Affidavit Filed After Final Rejection, 
152 USPQ 292, 1966 C.D. 53 (Comm’r Pat. 
1966).

==2266 Responses==

37 CFR 1.111. Reply by applicant or patent owner to a 
non-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 or reexamination 
proceeding, must reply and request reconsideration or further 
examination, with or without amendment. See §§ 1.135 and 1.136for time for reply to avoid abandonment.



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

(A)Cancellation of a claim(s);

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

(C)Placement of the application in condition for 
allowance;

(D)Reply to an Office requirement made after the 
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 the supplemental 
reply is filed within the period during which action by the 
Office is suspended under § 1.103(a) or (c).

(b)In order to be entitled to reconsideration or further examination, 
the applicant or patent owner must reply to the Office 
action. The reply by the applicant or patent owner must be 
reduced to a writing which distinctly and specifically points out 
the supposed errors in the examiner’s action and must reply to 
every ground of objection and rejection in the prior Office action. 
The reply must present arguments pointing out the specific distinctions 
believed to render the claims, including any newly presented 
claims, patentable over any applied references. If the reply 
is with respect to an application, a request may be made that 
objections or requirements as to form not necessary to further consideration 
of the claims be held in abeyance until allowable subject 
matter is indicated. The applicant’s or patent owner’s reply 
must appear throughout to be a bona fide attempt to advance the 
application or the reexamination proceeding to final action. A 
general allegation that the claims define a patentable invention 
without specifically pointing out how the language of the claims 
patentably distinguishes them from the references does not comply 
with the requirements of this section.

(c)In amending in reply to a rejection of claims in an application 
or patent under reexamination, the applicant or patent 
owner must clearly point out the patentable novelty which he or 
she thinks the claims present in view of the state of the art disclosed 
by the references cited or the objections made. The applicant 
or patent owner must also show how the amendments avoid 
such references or objections.

37 CFR 1.550. Conduct of ex parte reexamination 
proceedings.



(a)All ex parte reexamination proceedings, including any 
appeals to the Board of Patent Appeals and Interferences, will be 
conducted with special dispatch within the Office. After issuance 
of the ex parte reexamination order and expiration of the time for 
submitting any responses, the examination will be conducted in 
accordance with §§ 1.104 through 1.116 and will result in the issuance 
of an ex parte reexamination certificate under § 1.570.

(b)The patent owner in an ex parte reexamination proceeding 
will be given at least thirty days to respond to any Office 
action. In response to any rejection, such response may include 
further statements and/or proposed amendments or new claims to 
place the patent in a condition where all claims, if amended as 
proposed, would be patentable.

(c)The time for taking any action by a patent owner in 
an ex parte reexamination proceeding will be extended only for 
sufficient cause and for a reasonable time specified. Any request 
for such extension must be filed on or before the day on which 




 

action by the patent owner is due, but in no case will the mere filing 
of a request effect any extension. Any request for such extension 
must be accompanied by the petition fee set forth in § 
1.17(g). See § 1.304(a) for extensions of time for filing a notice of 
appeal to the U.S. Court of Appeals for the Federal Circuit or for 
commencing a civil action.

(d)If the patent owner fails to file a timely and appropriate 
response to any Office action or any written statement of an interview 
required under §
 
1.560(b), the ex parte reexamination proceeding 
will be terminated, and the Director will proceed to issue 
a certificate under § 1.570 in accordance with the last action of the 
Office.

(e)If a response by the patent owner is not timely filed in the 
Office,

(1)The delay in filing such response may be excused if it 
is shown to the satisfaction of the Director that the delay was 
unavoidable; a petition to accept an unavoidably delayed response 
must be filed in compliance with § 1.137(a); or

(2)The response may nevertheless be accepted if the 
delay was unintentional; a petition to accept an unintentionally 
delayed response must be filed in compliance with § 1.137(b). 

(f)The reexamination requester will be sent copies of Office 
actions issued during the ex parte reexamination proceeding. 
After filing of a request for ex parte reexamination by a third party 
requester, any document filed by either the patent owner or the 
third party requester must be served on the other party in the reexamination 
proceeding in the manner provided by § 1.248. The 
document must reflect service or the document may be refused 
consideration by the Office.

(g)The active participation of the ex parte reexamination 
requester ends with the reply pursuant to §
 
1.535, and no further 
submissions on behalf of the reexamination requester will be 
acknowledged or considered. Further, no submissions on behalf of 
any third parties will be acknowledged or considered unless such 
submissions are:

(1)in accordance with § 1.510 or § 1.535; or

(2)entered in the patent file prior to the date of the order 
for ex parte reexamination pursuant to §
 
1.525.

(h)Submissions by third parties, filed after the date of the 
order for ex parte reexamination pursuant to § 1.525, must meet 
the requirements of and will be treated in accordance with § 
1.501(a).

Pursuant to 37 CFR 1.550(a):

“After issuance of the ex parte reexamination order and 
expiration of the time for submitting any response, the 
examination will be conducted in accordance with §§ 1.104 
through 1.116…”

Accordingly, the provisions of 37 CFR 1.111 apply 
to the response by a patent owner in a reexamination 
proceeding.

The certificate of mailing and certificate of transmission 
procedures (37 CFR 1.8), and the “Express 
Mail” mailing procedure (37 CFR 1.10), may be used 
to file any response in a pending ex parte reexamination 
proceeding.

The patent owner is required to serve a copy of any 
response made in the reexamination proceeding on the 
third party requester. 37 CFR 1.550(f). See MPEP 
§
 
2266.03 as to service of patent owner responses to 
an Office action.

The patent owner will normally be given a period 
of 2 
months to respond to the Office action. An extension 
of time can be obtained only in accordance with 
37 CFR 1.550(c). Note that 37 CFR 1.136 does not 
apply in reexamination proceedings. 

If the patent owner fails to file a timely and appropriate 
response to any Office action, the prosecution 
of the reexamination proceeding will be terminated, 
unless the response is “not fully responsive” as 
defined in MPEP § 2266.01 or is an “informal submission” 
as defined in MPEP § 2266.02. After the 
prosecution of the proceeding is terminated, the 
Director will proceed to issue a reexamination certificate.


Pursuant to 37 CFR 1.111(a)(2), a response that is 
supplemental to a response that is in compliance with 
37 CFR 1.111(b) will not be entered as a matter of 
right. The Office may enter a supplemental response 
if the supplemental response is clearly limited to: (A) 
cancellation of a claim(s); (B) adoption of the examiner 
suggestion(s); (C) placement of the proceeding in 
condition for Notice of Intent to Issue Reexamination 
Certificate (NIRC); (D) a response to an Office 
requirement made after the first response was filed; 
(E) correction of informalities (e.g., typographical 
errors); or (F) simplification of issues for appeal. 
When a supplemental response is filed in sufficient 
time to be entered into the reexamination proceeding 
before the examiner considers the prior response, the 
examiner may approve the entry of a supplemental 
response if, after a cursory review, the examiner determines 
that the supplemental response is limited to 
meeting one or more of the conditions set forth in 37 
CFR 1.111(a)(2)(i).

A supplemental response, which has not been 
approved for entry, will not be entered when a 
response to a subsequent Office action is filed, even if 
there is a specific request for its entry in the subsequent 
response. If a patent owner wishes to have the 
unentered supplemental response considered by the 
examiner, the patent owner must include the contents 




 

of the unentered supplemental response in a proper 
response to a subsequent Office action. 

The patent owner in an ex parte reexamination proceeding 
must not file papers on behalf of a third party. 
37 CFR 1.550(g). If a third party paper accompanies, 
or is submitted as part of a timely filed response, the 
response and the third party paper are considered to 
be an improper submission under 37 CFR 1.550(g), 
and the entire submission shall be returned to the 
patent owner, since the Office will not determine 
which portion of the submission is the third party 
paper. The third party paper will not be considered. 
The decision returning the improper response and the 
third party paper should provide an appropriate extension 
of time under 37 CFR 1.550(c) to refile the patent 
owner response without the third party paper. See 
MPEP § 2254 and § 2267.

===2266.01 Submission Not Fully Responsive to Non-Final Office Action===

A response by the patent owner will be considered 
not fully responsive to a non-final Office action 
where:

(A)a bona fide response to an examiner’s non-
final action is filed;

(B)before the expiration of the permissible 
response period; 

(C)but through an apparent oversight or inadvertence, 
some point necessary to a full response has been 
omitted (i.e., appropriate consideration of a matter 
that the action raised, or compliance with a requirement 
made by the examiner, has been omitted).

Where patent owner’s amendment or response 
prior to final rejection is not fully responsive to an 
Office action in a reexamination and meets all of (A) 
through (C) above, the prosecution of the reexamination 
proceeding should not be terminated; but, 
rather, a practice similar to that of 37 CFR 1.135(c)
(which is directed to applications) may be followed. 
The examiner may treat a patent owner submission 
which is not fully responsive to a non-final Office 
action by:

(A)waiving the deficiencies (if not serious) in the 
response and acting on the patent owner submission;

(B)accepting the amendment as a response to the 
non-final Office action but notifying the patent owner 
(via a new Office action setting a new time period for 
response) that the omission must be supplied; or

(C)notifying the patent owner that the response 
must be completed within the remaining period for 
response to the non-final Office action (or within any 
extension pursuant to 37 CFR 1.550(c)) to avoid termination 
of the prosecution of the proceeding 
under 37 CFR 1.550(d). This third alternative should 
only be used in the very unusual situation where there 
is sufficient time remaining in the period for response 
(including extensions under 37 CFR 1.550(c)), as is 
discussed below.

Where a patent owner submission responds to the 
rejections, objections, or requirements in a non-final 
Office action and is a bona fide attempt to advance the 
reexamination proceeding to final action, but contains 
a minor deficiency (e.g., fails to treat every rejection, 
objection, or requirement), the examiner may simply 
act on the amendment and issue a new (non-final or 
final) Office action. The new Office action may simply 
reiterate the rejection, objection, or requirement 
not addressed by the patent owner submission, or the 
action may indicate that such rejection, objection, or 
requirement is no longer applicable. In the new 
Office action, the examiner will identify the part of 
the previous Office action which was not responded to 
and make it clear what is needed. Obviously, this 
course of action would not be appropriate in instances 
in which a patent owner submission contains a serious 
deficiency (e.g., the patent owner submission does not 
appear to have been filed in response to the non-final 
Office action).

Where patent owner’s submission contains a serious 
deficiency (i.e., omission) to be dealt with prior to 
issuing an action on the merits and the period for 
response has expired, or there is insufficient time 
remaining to take corrective action before the expiration 
of the period for response, the patent owner 
should be notified of the deficiency and what is 
needed to correct the deficiency, and given a new time 
period for response (usually 1 month). The patent 
owner must supply the omission within the new time 
period for response (or any extensions under 37 CFR 
1.550(c) thereof) to avoid termination of the prose





 

cution of the proceeding under 37 CFR 1.550(d). 
The patent owner may also file a further response as 
permitted under 37 CFR 1.111. This is analogous to 
37 CFR 1.135(c) for an application. 

In the very unusual situation where there is sufficient 
time remaining in the period for response 
(including extensions under 37 CFR 1.550(c)), the 
patent owner may simply be notified that the omission 
must be supplied within the remaining time period for 
response. This notification should be made, by telephone, 
and an interview summary record (see MPEP 
§ 713.04) must be completed and entered into the file 
of the reexamination proceeding to provide a record 
of such notification. When notification by telephone 
is not possible, the procedure set forth above should 
be followed.

The practice of giving the patent owner a time 
period to supply an omission in a bona fide response 
(which is analogous to that set forth in 37 CFR 
1.135(c) for an application) does not apply where 
there has been a deliberate omission of some necessary 
part of a complete response; rather, it is applicable 
only when the missing matter or lack of 
compliance is considered by the examiner as being 
“inadvertently omitted.” Once an inadvertent omission 
is brought to the attention of the patent owner, the 
question of inadvertence no longer exists. Therefore, a 
second Office action giving another new (1 month) 
time period to supply the omission would not be 
appropriate. However, if patent owner’s response to 
the notification of the omission raises a different issue 
of a different inadvertently omitted matter, a second 
Office action may be given.

This practice authorizes, but does not require, an 
examiner to give the patent owner a new time period 
to supply an omission. Thus, where the examiner concludes 
that the patent owner is attempting to abuse the 
practice to obtain additional time for filing a response, 
the practice should not be followed. If time still 
remains for response, the examiner may telephone the 
patent owner and inform the patent owner that the 
response must be completed within the period for 
response to the non-final Office action or within any 
extension pursuant to 37 CFR 1.550(c) to avoid termination 
of the prosecution of the reexamination proceeding.


The practice of giving the patent owner a time 
period to supply an omission in a bona fide response 
does not apply after a final Office action. If a bona 
fide response to an examiner’s action is filed after 
final rejection (before the expiration of the permissible 
response period), but through an apparent oversight 
or inadvertence, some point necessary to fully 
respond has been omitted, the examiner should notissue (to the patent owner) a notice of failure to fully 
respond. Rather, an advisory Office action (form 
PTOL-467) should be issued with an explanation of 
the omission. The time period set in the final rejection 
continues to run and is extended by 1 month if the 
response is the first response after the final rejection 
in accordance with the 
guidelines set forth in MPEP 
§
 
2265. See also MPEP §
 
2272.




 

Amendments after final rejection are approved for 
entry only if they place the proceeding in condition 
for issuance of a reexamination certificate or in better 
form for appeal. Otherwise, they are not approved for 
entry. See MPEP §
 
714.12 and § 714.13. Thus, an 
amendment after final rejection should be denied 
entry if some point necessary for a complete response 
under 37 CFR 1.113 was omitted, even where the 
omission was through an apparent oversight or inadvertence. 
Where a submission after final Office action 
 (e.g., an amendment filed under 37 CFR 1.116) 
does not place the proceeding in condition for issuance 
of a reexamination certificate, the period for 
response continues to run until a response under 
37 
CFR 1.113 (i.e., a Notice of Appeal or an amendment 
that places the proceeding in condition for issuance 
of a reexamination certificate) is filed. Where a 
submission after appeal (e.g., an amendment filed 
under 37 CFR 41.33) does not place the proceeding in 
condition for issuance of a reexamination certificate, 
the period for filing an appeal brief continues to run 
until an appeal brief or an amendment that places the 
proceeding in condition for issuance of a reexamination 
certificate is filed. The nature of the omission is 
immaterial. The examiner cannot give the patent 
owner a time period to supply the omission.

The examiner has the authority to enter the 
response, withdraw the final Office action, and issue a 
new Office action, which may be a final Office action, 
if appropriate, or an action closing prosecution in an 
otherwise allowable application under Ex parte 
Quayle, 25 USPQ 74, 1935 C.D. 11 (Comm’r Pat. 
1935), if appropriate. This course of action is within 
the discretion of the examiner. However, the examiner 
should recognize that substantial patent rights will be 
at issue with no opportunity for the patent owner to 
refile under 37 CFR 1.53(b) or 1.53(d) in order to 
continue prosecution nor to file a request for continued 
examination under 37 CFR 1.114. Thus, where 
the time has expired for response and the amendment 
submitted would place the proceeding in condition for 
issuance of a reexamination certificate except for an 
omission through apparent oversight or inadvertence, 
the examiner should follow this course of action.

2266.02Examiner Issues Notice of Defective 
Paper in Ex Parte Reexam-
ination [R-5]

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

(A)The paper filed does not include proof of service;


(B)The paper filed is unsigned;

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

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

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

Where a submission made prior to final rejectionis defective (informal), form PTOL-475 is used to 
provide notification of the defects present in the submission. 
In many cases, it is only necessary to check 
the appropriate box on the form and fill in the blanks. 
However, if the defect denoted by one of the entries 
on form PTOL-475 needs further clarification (such as 
the specifics of why the amendment does not comply 
with 37 CFR 1.530(d)-(j)), the additional information 
should be set forth on a separate sheet of paper which 
is then attached to the form.

The defects identified above as (A) through (E) are 
specifically included in form PTOL-475. If the submission 
contains a defect other than those specifically 
included on the form, the “other” box on the form is to 
be checked and the defect explained in the space provided 
for the explanation. For example, a response 
might be presented on easily erasable paper, and thus, 
a new submission would be needed.

A time period of one month or thirty days, whichever 
is longer, from the mailing date of the PTOL-475 
letter will be set in form PTOL-475 for correction of 
the defect(s). Extension of time to correct the 
defect(s) may be requested under 37 
CFR 1.550(c). 
If, in response to the notice, the defect still is not 
corrected, the submission will not be entered. If the 
failure to comply with the notice results in a patent 
owner failure to file a timely and appropriate response 
to any Office action, the prosecution of the reexami





 

nation proceeding generally will be terminated under 
37 
CFR 1.550(d).

If a defective (informal) response to an examiner’s 
action is filed after final rejection (before the expiration 
of the permissible response period), the examiner 
should not issue a form PTOL-475 notification to the 
patent owner. Rather, an advisory Office action (form 
PTOL-467) should be issued with an explanation of 
the defect (informality). The time period set in the 
final rejection continues to run and is extended by 
1 
month if the response is the first 
response after the 
final rejection in accordance with the guidelines set 
forth in MPEP § 2265. See also MPEP §
 
2272.


 

===2266.03 Service of Papers===

37 CFR 1.510. Request for ex parte reexamination.



(b)Any request for reexamination must include the following 
parts:



(5)A certification that a copy of the request filed by a person 
other than the patent owner has been served in its entirety on 
the patent owner at the address as provided for in § 1.33(c). The 
name and address of the party served must be indicated. If service 
was not possible, a duplicate copy must be supplied to the Office



37 CFR 1.550. Conduct of ex parte reexamination 
proceedings.



(f)The reexamination requester will be sent copies of Office 
actions issued during the ex parte reexamination proceeding. 
After filing of a request for ex parte reexamination by a third party 
requester, any document filed by either the patent owner or the 
third party requester must be served on the other party in the reexamination 
proceeding in the manner provided by § 1.248. The 
document must reflect service or the document may be refused 
consideration by the Office.



Any paper filed with the Office, i.e., any submission 
made, in a third party requested reexamination by 
either the patent owner or the third party requester, 
must be served on every other party in the reexamination 
proceeding.

As proof of service, the party submitting the paper 
to the Office must attach a certificate of service to the 
paper. It is required that the name and address of the 
party served, and the method of service be set forth in 
the certificate of service. Further, a copy of the certificate 
of service must be attached with the copy of the 
paper that is served on the other party.

Any paper for which proof of service is 
required, which is filed without proof of service,
may be denied consideration. Where no proof of service 
is included, the reexamination clerk should 
immediately contact the party making the submission 
by telephone to see whether the indication of proof of 
service was inadvertently omitted from the submission 
but there was actual service.

If service was in fact made, the party making the 
submission should be advised to submit a supplemental 
paper indicating the manner and date of service. 
The reexamination clerk should enter the submission 
for consideration, and annotate the submission with:

“Service confirmed by [name of person] on [date]”

If no service was made, or the party making the 
submission cannot be contacted where an effort to 
do so was made, the submission is placed in the 
reexamination file and normally is not considered. 
Where the submission is not considered because of 
a service defect, the submission is added to the IFW 
file history as an unentered paper with a “N/E” notation, 
along with a brief annotation as to why the paper 
is not entered. The submission itself shall be annotated 
with “no service,” which also can be crossed 
through if the appropriate service is later made.

If the party making the submission cannot be contacted, 
a Notice of Defective Paper (PTOL-475), giving 
1 month or 30 days, whichever is longer, to 
complete the paper, with a supplemental paper indicating 
the manner and date of service, will be mailed 
to the party.

If it is known that service of a submission was not 
made, notice of the requirement for service of copy 
is 
given (to the party that made the submission), and a 
1-month or 30 days, whichever is longer, time period 
is set.


The failure of a party to serve the submission in 
response to the notice will have the following consequences:


(A)For a patent owner statement or a third party 
reply, the submission may be refused consideration by 
the Office. Where consideration is refused, the submission 
will not be addressed in the reexamination 
proceeding other than to inform parties of the lack of 
consideration thereof;

(B)For a patent owner response to an Office 
action, the response may be refused consideration by 
the Office. Where consideration of a response is 
refused, the prosecution of the proceeding will be terminated 
in accordance with 37 CFR 1.550(d), unless 
the patent owner has otherwise completely responded 
to the Office action.

See MPEP § 2220 as to the initial third party 
request.

See MPEP § 2249 as to the patent owner statement.


See MPEP § 2251 as to third party reply.

See MPEP § 2266 as to patent owner responses to 
an Office action. 

==2267 Handling of Inappropriate or Untimely Filed Papers==

The applicable regulations (37 CFR 1.501(a), 
1.550(e)) provide that certain types of correspondence 
will not be considered or acknowledged unless timely 
received. Whenever reexamination correspondence is 
received, a decision is required of the Office as to the 
action to be taken on the correspondence based on 
what type of paper it is and whether it is timely.

The return of inappropriate submissions complies 
with the regulations that certain papers will not be 
considered and also reduces the amount of paper 
which would ultimately have to be scanned into the 
record.

I.DISPOSITION OF PAPERS

Where papers are filed during reexamination proceedings 
which are inappropriate because of some 
defect, such papers will either be returned to the 
sender or forwarded to one of three files, the “Reexamination 
File” (paper file or IFW file history), the 
“Patent File” (paper file or IFW file history), or the 
“Storage File” (paper file). Any papers returned to 
the 
sender from the Central Reexamination Unit 
(CRU) or a Technology Center (TC) must be accompanied 
by a letter indicating signature and approval of 
the CRU or TC Director.

The “Storage Files” will be maintained separate 
and apart from the other two files at a location 
selected by the CRU or TC Director. For example, 
the CRU or TC Director may want to locate the 
“Storage File” in a central area in the CRU or TC 
as with the reexamination clerk or in his or her room.

II.TYPES OF PAPERS RETURNED WITHDIRECTOR OF THE USPTO OR CRU/
TC DIRECTOR’S APPROVAL REQUIRED


Filed by 
Owner

A. Premature Response by Owner-

§ 1.530(a), 
§ 1.540

Where the patent owner is NOT 
the requester, any response or 
amendment filed by owner prior to 
an order to reexamine is premature 
and will be returned and will 
not be considered.

§ 1.550(g)

B. Paper Submitted on Behalf of 
Third Party -

Submission filed on behalf of a 
third party will be returned and 
will not be considered. Where 
third party paper is submitted as 
part of a patent owner response, 
see MPEP § 2254 and § 2266.








 

Filed by 
Requester

A. No Statement Filed by Owner -

§ 1.535

If a patent owner fails to file a 
statement within the prescribed 
limit, any reply by the requester is 
inappropriate and will be returned 
and will not be considered.

B. Late Response by Requester -

§ 1.535, 
§
 
1.540

Any response subsequent to 2 
months from the date of service of 
the patent owner’s statement will 
be returned and will not be considered.


C. Additional Response by 
Requester-

§ 1.550(g)

The active participation of the 
reexamination requester ends with 
the reply pursuant to § 1.535. 
Any further submission on behalf 
of requester will be returned and 
will not be considered.





Filed by 
Third Party

§ 1.501, 
§
 
1.565(a)

Unless a paper submitted by a 
third party raises only issues 
appropriate under 37 CFR 1.501, 
or consists solely of a prior decision 
on the patent by another 
forum, e.g., a court (see MPEP § 
2207 and § 2286 or presentation 
of a paper of record in a litigation 
(see MPEP § 2282)), it will be 
returned to an identified third 
party or destroyed if the submitter 
is unidentified.





Where a paper is to be returned based on the above 
criteria, or other appropriate reasons, and the paper is 
not accompanied by a petition under 37 CFR 1.182 or 
1.183, the CRU or TC Director will return the 
paper. Where a petition under 37 CFR 1.182 or 1.183has been filed, the reexamination proceeding should 
be forwarded to the Office of Patent Legal Administration 
for decision.

III.TYPES OF DEFECTIVE PAPERS TO BE 
LOCATED IN THE “REEXAMINATION 
FILE”

Filed by 
Owner

A. Unsigned Papers -

§ 1.33

Papers filed by owner which are 
unsigned or signed by less than all 
of the owners (no attorney of 
record or acting in representative 
capacity).

B. No Proof of Service -

§ 1.248

Papers filed by the patent owner in 
which no proof of service on 
requester is included and proof of 
service is required may be denied 
consideration.

C. Untimely Papers -

§ 1.530(b), 
§
 
1.540

Where owner has filed a paper 
which is untimely, that is, it was 
filed after the period set for 
response, the paper will not be 
considered.








 

Filed by 
Requester

A. Unsigned Papers -

 

Papers filed by requester which 
are unsigned will not be considered.


B. No Proof of Service -

§
 
1.510(b)(5)
§ 1.33, 
§
 
1.248

Papers filed by requester in which 
no proof of service on owner is 
included and where proof of service 
is required may be denied 
consideration.





IV.PAPERS LOCATED IN THE “STORAGE 
FILE”

§ 1.501

Citations by Third Parties

§ 1.550(h)

Submissions by third parties based 
solely on prior art patents or publications 
filed after the date of the 
order to reexamine are not entered 
into the patent file but delayed 
until the reexamination proceedings 
have been concluded. See 
MPEP § 2206.





 Proper timely filed citations by third parties (i.e., 
filed prior to the order) are placed in the reexamination 
file.

==2268 Petition for Entry of Late Papers for Revival of Reexamination Proceeding==

35 U.S.C. 41. Patent fees; patent and trademark search 
systems.

(a)GENERAL FEES. — The Director shall charge the following 
fees:



(7)REVIVAL FEES. — On filing each petition for the 
revival of an unintentionally abandoned application for a patent, 
for the unintentionally delayed payment of the fee for issuing each 
patent, or for an unintentionally delayed response by the patent 
owner in any reexamination proceeding, $1,500, unless the petition 
is filed under section 133 or 151 of this title, in which case the 
fee shall be $500.



35 U.S.C. 133. Time for prosecuting application.

Upon failure of the applicant to prosecute the application 
within six months after any action therein, of which notice has 
been given 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 parties 
thereto, unless it be shown to the satisfaction of the Director that 
such delay was unavoidable.

37 CFR 1.137. Revival of abandoned application, 
terminated reexamination proceeding, or lapsed patent.

(a)Unavoidable. If the delay in reply by applicant or patent 
owner was unavoidable, a petition may be filed pursuant to this 
paragraph to revive an abandoned application, a reexamination 
proceeding terminated under §§ 1.550(d) or 1.957(b) or (c), or a 
lapsed patent. A grantable petition pursuant to this paragraph must 
be accompanied by:

(1)The reply required to the outstanding Office action or 
notice, unless previously filed;

(2)The petition fee as set forth in § 1.17(l);

(3)A showing to the satisfaction of the Director that the 
entire delay in filing the required reply from the due date for the 
reply until the filing of a grantable petition pursuant to this paragraph 
was unavoidable; and

(4)Any terminal disclaimer (and fee as set forth in 
§
 
1.20(d)) required pursuant to paragraph (d) of this section.

(b)Unintentional. If the delay in reply by applicant or patent 
owner was unintentional, a petition may be filed pursuant to this 
paragraph to revive an abandoned application, a reexamination 
proceeding terminated under §§ 1.550(d) or 1.957(b) or (c), or a 
lapsed patent. A grantable petition pursuant to this paragraph must 
be accompanied by:

(1)The reply required to the outstanding Office action or 
notice, unless previously filed;

(2)The petition fee as set forth in § 1.17(m);

(3)A statement that the entire delay in filing the required 
reply from the due date for the reply until the filing of a grantable 
petition pursuant to this paragraph was unintentional. The Director 
may require additional information where there is a question 
whether the delay was unintentional; and

(4)Any terminal disclaimer (and fee as set forth in § 
1.20(d)) required pursuant to paragraph (d) of this section.



(e)Request for reconsideration. Any request for reconsideration 
or review of a decision refusing to revive an abandoned 
application, a terminated reexamination proceeding, or lapsed 
patent upon petition filed pursuant to this section, to be considered 
timely, must be filed within two months of the decision refusing 
to revive or within such time as set in the decision. Unless a 
decision indicates otherwise, this time period may be extended 
under:




 

(1)The provisions of § 1.136 for an abandoned application 
or lapsed patent;

(2)The provisions of § 1.550(c) for a terminated ex partereexamination proceeding filed under §
 
1.510; or

(3)The provisions of § 1.956 for a terminated inter partesreexamination proceeding filed under § 1.913.



Pursuant to 37 CFR 1.550(d), the prosecution of an 
ex parte reexamination proceeding is terminated if the 
patent owner fails to file a timely and appropriate 
response to any Office action or any written statement 
of an interview required under 37 CFR 1.560(b). An 
ex parte reexamination prosecution terminated under 
37 CFR 1.550(d) can be revived if the delay in 
response by the patent owner (or the failure to timely 
file the interview statement) was unavoidable in 
accordance with 37 CFR 1.137(a), or unintentional in 
accordance with 37 CFR 1.137(b).

The failure to timely file a statement pursuant to 
37 
CFR 1.530 or a reply pursuant to 37 CFR 1.535, 
however, would not (under ordinary circumstances) 
constitute adequate basis to justify a showing of 
unavoidable/unintentional delay regardless of the reasons 
for the failure, since failure to file a statement or 
reply does not result in a “termination” of the reexamination 
prosecution, to which 37 CFR 1.137 is 
directed.

All petitions in reexamination proceedings to 
accept late papers and to revive the proceedings will 
be decided in the Office of Patent Legal Administration. 


I.PETITION BASED ON UNAVOIDABLE 
DELAY

The unavoidable delay provisions of 35 U.S.C. 133are imported into, and are applicable to, ex parte reexamination 
proceedings by 35 U.S.C. 305. See In re 
Katrapat, 6 USPQ2d 1863 (Comm’r Pat. 1988). 
Accordingly, the Office will consider, in appropriate 
circumstances, a petition showing unavoidable delay 
under 37 CFR 1.137(a) where untimely papers are 
filed subsequent to the order for reexamination. Any 
such petition must provide an adequate showing of 
the cause of unavoidable delay, including the details 
of the circumstances surrounding the unavoidable 
delay and evidence to support the showing. Additionally, 
the petition must be accompanied by the petition 
fee set forth in 37 CFR 1.17(l) and a proposed 
response to continue prosecution (unless it has been 
previously filed).

II.PETITION BASED ON UNINTENTIONAL 
DELAY

The unintentional delay fee provisions of 35 
U.S.C. 
41(a)(7) are imported into, and are applicable to, all 
ex parte reexamination proceedings by section 4605 
of the American Inventors Protection Act of 1999. 
The unintentional delay provisions of 35 U.S.C. 
41(a)(7) became effective in reexamination proceedings 
on November 29, 2000. Accordingly, the Office 
will consider, in appropriate circumstances, a petition 
showing unintentional delay under 37 CFR 1.137(b)
where untimely papers are filed subsequent to the 
order for reexamination. Any such petition must provide 
a verified statement that the delay was unintentional, 
a proposed response to continue prosecution 
(unless it has been previously filed), and the petition 
fee set forth in 37 CFR 1.17(m).

III.RENEWED PETITION

Reconsideration may be requested of a decision 
dismissing or denying a petition under 37 CFR 
1.137(a) or (b) to revive a terminated reexamination 
prosecution. The request for reconsideration must be 
submitted within one (1) month from the mail date of 
the decision for which reconsideration is requested. 
An extension of time may be requested only under 
37 
CFR 1.550(c); extensions of time under 37 CFR 
1.136 are not available in reexamination proceedings. 
Any reconsideration request which is submitted 
should include a cover letter entitled “Renewed Petition 
under 37 CFR 1.137(a)” (for a petition based on 
unavoidable delay) or “Renewed Petition under 
37 
CFR 1.137(b)” (for a petition based on unintentional 
delay).

IV.FURTHER DISCUSSION OF THE PETITION 
REQUIREMENTS

See also MPEP § 711.03(c), subsection III, for 
a detailed discussion of the requirements of petitions 
filed under 37 CFR 1.137(a) and (b).

==2269 Reconsideration==

In order to be entitled to reconsideration, the patent 
owner must respond to the Office action. 37 CFR 




 

1.111(b). The patent owner may respond to such 
Office action with or without amendment and the 
patent under reexamination will be reconsidered, and 
so on repeatedly unless the examiner has indicated 
that the action is final. See 37 
CFR 1.112. Any 
amendment after the second Office action, which will 
normally be final as provided for in MPEP § 2271, 
must ordinarily be restricted to the rejection or to the 
objection or requirement made.

==2270 Clerical Handling==

The person designated as the reexamination clerk 
will handle most of the initial clerical processing of 
the reexamination file. The Central Reexamination 
Unit or Technology Center Special Program 
Examiner provides oversight as to clerical processing.

Amendments which comply with 37 CFR 1.530(d)-
(j) will be entered for purposes of reexamination in 
the reexamination file. See MPEP § 2234 and §
 
2250for the manner of entering amendments.

For entry of amendments in a merged reissue-reexamination 
proceeding, see MPEP § 2283 and § 2285.

Where an amendment is submitted in proper form 
and it is otherwise appropriate to enter the amendment, 
the amendment will be entered for purposes of 
the reexamination proceeding, even though the 
amendment does not have legal effect until the certificate 
is issued. Any “new matter” amendment to the 
disclosure (35 U.S.C. 132) will be required to be canceled, 
and claims containing new matter will be 
rejected under 35 U.S.C. 112. A “new matter” amendment 
to the drawing is ordinarily not entered. See 
MPEP § 608.04, § 608.04(a) and (c). Where an 
amendment enlarges the scope of the claims of the 
patent, the amendment will be entered; however the 
appropriate claims will be rejected under 35 U.S.C. 
305.

==2271 Final Action==

Before a final action is in order, a clear issue should 
be developed between the examiner and the patent 
owner. To bring the prosecution to a speedy conclusion 
and at the same time deal justly with the patent 
owner and the public, the examiner will twice provide 
the patent owner with such information and references 
as may be useful in defining the position of the Office 
as to unpatentability before the action is made final. 
Initially, the decision ordering reexamination of the 
patent will contain an identification of the new questions 
of patentability that the examiner considers to be 
raised by the prior art considered. In addition, the first 
Office action will reflect the consideration of any 
arguments and/or amendments contained in the 
request, the owner’s statement filed pursuant to 
37 
CFR 1.530, and any reply thereto by the requester, 
and should fully apply all relevant grounds of rejection 
to the claims.

The statement which the patent owner may file 
under 37 CFR 1.530 and the response to the first 
Office action should completely respond to and/or 
amend with a view to avoiding all outstanding 
grounds of rejection.

It is intended that the second Office action in the 
reexamination proceeding following the decision 
ordering reexamination will be made final in accordance 
with the guidelines set forth in MPEP 
§
 
706.07(a). The examiner should not prematurely cut 
off the prosecution with a patent owner who is seeking 
to define the invention in claims that will offer the 
patent protection to which the patent owner is entitled. 
However, both the patent owner and the examiner 
should recognize that a reexamination proceeding 
may result in the final cancellation of claims from the 
patent and that the patent owner does not have the 
right to renew or continue the proceedings by refiling 
under 37 CFR 1.53(b) or 1.53(d) or former 37 CFR 
1.60 or 1.62, nor by filing a request for continued 
examination under 37 CFR 1.114. Complete and thorough 
actions by the examiner coupled with complete 
responses by the patent owner, including early presentation 
of evidence under 37 CFR 1.131 or 1.132, will 
go far in avoiding such problems and reaching a desirable 
early termination of the reexamination prosecution. 


In making the final rejection, all outstanding 
grounds of rejection of record should be carefully 
reviewed and any grounds or rejection relied on 
should be reiterated. The grounds of rejection must (in 
the final rejection) be clearly developed to such an 
extent that the patent owner may readily judge the 
advisability of an appeal. However, where a single 
previous Office action contains a complete statement 
of a ground of rejection, the final rejection may refer 
to such a statement and also should include a rebuttal 
of any arguments raised in the patent owner’s 
response. 




 

I.PANEL REVIEW CONFERENCE

After an examiner has determined that the reexamination 
proceeding is ready for final rejection, the 
examiner will formulate a draft preliminary decision 
to issue a final rejection, the preliminary decision setting 
forth which claims to reject, the grounds of rejection, 
which claims to allow/confirm and reasons for 
allowance/confirmation. The examiner will then 
inform his/her Special Program Examiner 
(SPRE) of his/her intent to issue the final rejection. 
The SPRE will convene a panel review conference, 
and the conference members will review the 
patentability of the claim(s) pursuant to MPEP 
§
 
2271.01. If the conference confirms the examiner’s 
preliminary decision to reject and/or allow the claims, 
the proposed final rejection shall be issued and 
signed by the examiner, with the two other conferees 
initialing the action (as “conferee”) to indicate their 
presence in the conference. If the conference does not 
confirm the examiner’s preliminary decision, the 
examiner will reevaluate and issue an appropriate 
Office action. 

II.FORM PARAGRAPHS



III.ART CITED BY PATENT OWNER DURING 
PROSECUTION

Where art is submitted in a prior art citation under 
37 CFR 1.501 and/or 37 CFR 1.555 (an IDS filed in a 
reexamination is construed as a prior art citation) and 
the submission is not accompanied by a statement 
similar to that of 37 CFR 1.97(e), the examiner may 
use the art submitted and make the next Office action 
final whether or not the claims have been amended, 




 

provided that no other new ground of rejection is 
introduced by the examiner based on the new art not 
cited in the prior art citation. See MPEP § 706.07(a).

IV.SIGNATORY AUTHORITY

As with all other Office correspondence on the 
merits in a reexamination proceeding, the final Office 
action must be signed by a primary examiner.

===2271.01 Panel Review===

A panel review will be conducted at each stage 
of the examiner’s examination in an ex parte reexamination 
proceeding, other than for actions such as 
notices of informality or incomplete response. Matters 
requiring decision outside of the examiner’s jurisdiction 
(e.g., decisions on petitions or extensions of time, 
or Central Reexamination Unit (CRU) support staff 
notices) will not be reviewed by a panel.

The panel review is carried out for each Office 
action. The panel reviews the examiner’s preliminary 
decision to reject and/or allow the claims in the reexamination 
proceeding, prior to the issuance of each 
Office action.

I.MAKE-UP OF THE PANEL

The panel will consist of three members, one of 
whom will be a manager. The second member will be 
the examiner in charge of the proceeding. The manager 
will select the third member. The examiner-conferees 
will be primary examiners, or examiners who 
are knowledgeable in the technology of the invention 
claimed in the patent being reexamined and/or who 
are experienced in reexamination practice. The majority 
of those present at the conference will be examiners 
who were not involved in the examination or 
issuance of the patent. An “original” examiner (see 
MPEP § 2236) should be chosen as a conferee only if 
that examiner is the most knowledgeable in the art, or 
there is some other specific and justifiable reason to 
choose an original examiner as a participant in the 
conference.

II.PANEL PROCESS

The examiner must inform his/her manager of 
his/her intent to issue an Office action. The manager 
will then convene a panel and the members 
will confer and review the patentability of the 
claim(s). If the conference confirms the examiner’s 
preliminary decision to reject and/or allow the claims, 
the Office action  shall be issued and signed by the 
examiner, with the two other conferees initialing the 
action (as “conferee”) to indicate their participation in 
the conference. Both conferees will initial, even 
though one of them may have dissented from the 3-
party conference decision as to the patentabiliy of 
claims. If the conference does not confirm the examiner’s 
preliminary decision, examiner will reevaluate 
and issue an appropriate Office action .

Where the examiner in charge of the proceeding is 
not in agreement with the conference decision, the 
manager will generally assign the proceeding to 
another examiner.

III.WHAT THE CONFERENCE IS TO 
ACCOMPLISH

 Each conference will provide a forum to consider 
all issues of patentability as well as procedural issues 
having an impact on patentability. Review of the patentability 
of the claims by more than one primary 
examiner should diminish the perception that the 
patent owner can disproportionately influence the 
examiner in charge of the proceeding. The conferences 
will also provide greater assurance that all matters 
will be addressed appropriately. All issues in the 
proceeding will be viewed from the perspectives of 
three examiners. What the examiner in charge of the 
proceeding might have missed, the other two conference 
members would likely detect. The conference 
will provide for a comprehensive discussion of, and 
finding for, each issue.

IV.CONSEQUENCES OF FAILURE TO 
HOLD CONFERENCE

Should the examiner issue an Office action 
without panel review, the patent owner or the third 
party requester who wishes to object must promptly 
file a paper alerting the Office of this fact. (The failure 
to provide panel review would be noted by the 
parties where there are no conferees’ initials at the 
end of the  Office action.) Any challenge of the failure 
to hold a panel review conference must be 
made within two weeks of receipt of the Office 
action issued, or the challenge will not be considered. 
 In no event will the failure to hold a panel
review conference, by itself, be grounds for vacating 




 

any Office decision(s) or action(s) and “restarting” the 
reexamination proceeding.

==2272 After Final Practice==

It is intended that prosecution before the examiner 
in a reexamination proceeding will be concluded with 
the final action. Once a final rejection that is not premature 
has been entered in a reexamination proceeding, 
the patent owner no longer has any right to 
unrestricted further prosecution. Consideration of 
amendments submitted after final rejection and prior 
to, or with, the appeal will be governed by the strict 
standards of 37 CFR 1.116. Further, consideration of 
amendments submitted after appeal will be governed 
by the strict standards of 37 CFR 41.33. Both the 
examiner and the patent owner should recognize that 
substantial patent rights will be at issue with no 
opportunity for the patent owner to refile under 
37 
CFR 1.53(b), or 1.53(d),  and with no opportunity 
to file a request for continued examination 
under 37 CFR 1.114. Accordingly, both the examiner 
and the patent owner should identify and develop all 
issues prior to the final Office action, including the 
presentation of evidence under 37 CFR 1.131 and 
1.132.

I.FINAL REJECTION — TIME FOR 
RESPONSE

The statutory period for response to a final rejection 
in a reexamination proceeding will normally be two 
(2) months. If a response to the final rejection is filed, 
the time period set in the final rejection continues to 
run. The time period is automatically extended by 
1 
month (in accordance with the guidelines set forth 
in MPEP § 2265) if the response is the first response 
after the final rejection and a notice of appeal has not 
yet been filed. Any advisory Office action using 
form PTOL-467, Ex Parte Reexamination Advisory 
Action Before the Filing of an Appeal Brief, which 
is issued in reply to patent owner’s response after 
final rejection (and prior to the filing of the notice of 
appeal) will inform the patent owner of the automatic 
1 month extension of time. It should be noted 
that the filing of any timely first response to a final 
rejection (even an informal response or even a 
response that is not signed) will automatically result 
in the extension of the shortened statutory period for 
an additional month. Note further that the patent 
owner is entitled to know the examiner’s ruling on a 
timely response filed after final rejection before being 
required to file a notice of appeal. Notification of the 
examiner’s ruling should reach the patent owner with 
sufficient time for the patent owner to consider the 
ruling and act on it. Accordingly, the period for 
response to the final rejection should be appropriately 
extended in the examiner’s advisory action. See Theodore 
Groz & Sohne & Ernst Bechert Nadelfabrik KG 
v. Quigg, 10 
USPQ2d 1787 (D.D.C. 1988). The 
period for response may not, however, be extended to 
run past 6 months from the date of the final rejection.

II.ACTION BY EXAMINER

It should be kept in mind that a patent owner cannot, 
as a matter of right, amend any finally rejected 
claims, add new claims after a final rejection, or reinstate 
previously canceled claims. For an amendment 
filed after final rejection and prior to the appeal 
brief, a showing under 37 
CFR 1.116(b) is required 
and will be evaluated by the examiner for all proposed 
amendments after final rejection except where an 
amendment merely cancels claims, adopts examiner’s 
suggestions, removes issues for appeal, or in some 
other way requires only a cursory review by the 
examiner. An amendment filed at any time after final 
rejection but before an appeal brief is filed, may be 
entered upon or after filing of an appeal provided :

(A)the total effect of the amendment is to cancel 
claims or comply with any requirement of form 
expressly set forth in a previous Office action, or 
present rejected claims in better form for consideration 
on appeal;

(B)for an amendment touching the merits of the 
patent under reexamination, the patent owner provides 
a showing of good and sufficient reasons why 
the amendment is necessary and was not earlier presented.


The first proposed amendment after final action in a 
reexamination proceeding will be given sufficient 
consideration to determine whether it places all the 
claims in condition where they are patentable and/or 
whether the issues on appeal are reduced or simplified. 
Unless the proposed amendment is entered in its 
entirety, the examiner will briefly explain the reasons 
for not entering a proposed amendment. For example, 
if the claims as amended present a new issue requiring 




 

further consideration or search, the new issue should 
be identified and a brief explanation provided as to 
why a new search or consideration is necessary. The 
patent owner should be notified if certain portions of 
the amendment would be entered if a separate paper 
was filed containing only such amendment.

Any second or subsequent amendment after final 
will be considered only to the extent that it removes 
issues for appeal or puts a claim in obvious patentable 
condition.

Since patents undergoing reexamination cannot 
become abandoned and cannot be refiled, and since 
the holding of claims unpatentable and canceled in a 
certificate is absolutely final, it is appropriate that the 
examiner consider the feasibility of entering amendments 
touching the merits after final rejection or after 
appeal has been taken, where there is a showing why 
the amendments are necessary and a suitable reason is 
given why they were not earlier presented.

The practice of giving the patent owner a time 
period to supply an omission in a bona fide response 
(as set forth in MPEP § 2266.01) does not apply after 
a final Office action. If a bona fide response to an 
examiner’s action is filed after final rejection (before 
the expiration of the permissible response period), but 
through an apparent oversight or inadvertence, some 
point necessary to fully respond has been omitted, the 
examiner should not issue (to the patent owner) a 
notice of failure to fully respond. Rather, an advisory 
Office action (form PTOL-467) should be issued with 
an explanation of the omission. 

Likewise, the practice of notifying the patent owner 
of the defects present in a submission via form PTOL-
475 and setting a time period for correction of 
the 
defect(s) (as set forth in MPEP § 2266.02) does 
not apply after a final Office action. If a defective 
(informal) response to an examiner’s action is filed 
after final rejection (before the expiration of the permissible 
response period), the examiner should notissue a form PTOL-475 notification to the patent 
owner. Rather, an advisory Office action (form 
PTOL-467) should be issued with an explanation of 
the defect (informality) being provided in the advisory 
action.

==2273 Appeal in Ex Parte Reexamination==

35 U.S.C. 306. Appeal.

The patent owner involved in a reexamination proceeding 
under this chapter may appeal under the provisions of section 134of this title, and may seek court review under the provisions of 
sections 141 to 145 of this title, with respect to any decision 
adverse to the patentability of any original or proposed amended 
or new claim of the patent.

A patent owner who is dissatisfied with the primary 
examiner’s decision to reject claims in an ex partereexamination proceeding may appeal to the Board of 
Patent Appeals and Interferences for review of the 
examiner’s rejection by filing a notice of appeal 
within the required time. A third party requester may 
not appeal, and may not participate in the patent 
owner’s appeal.

 In an ex parte reexamination filed before November 
29, 1999, the patent owner may appeal to the 
Board  after the second rejection of the claims 
(which is either final or non-final). This is based on 
the version of 35 U.S.C. 134 in existence prior to the 
amendment of the reexamination statute on November 
29, 1999, by Public Law 106-113. This “prior version” 
of 35 U.S.C. 134 applies to appeals in reexamination 
where the reexamination was filed in the Office 
on or after November 29, 1999. See Section 13202(d) 
of Public Law 107-273.

 In an ex parte reexamination  filed on or afterNovember 29, 1999, the patent owner may appeal to 
the Board only after the final rejection of the claims. 
This is based on the current version of 35 U.S.C. 134as amended by Public Law 106-113. This “current 
version” of 35 U.S.C. 134 applies to appeals in reexamination, 
where the reexamination was filed in 
the Office on or after November 29, 1999. See 
Section 13202(d) of Public Law 107-273.

The notice of appeal need not be signed by the 
patent owner or his or her attorney or agent. See 
37 
CFR 41.31(b). The fee required by 37 CFR 
41.20(b)(1) must accompany the notice of appeal. 
See 37 CFR 41.31(a)(2) and (a)(3).

The period for filing the notice of appeal is the 
period set for response in the last Office action which 
is normally 2 months. The timely filing of a first 
response to a final rejection having a shortened statutory 
period for response is construed as including a 
request to extend the period for response an additional 
month, even if an extension has been previously 
granted, as long as the period for response does not 
exceed 6 months from the date of the final rejection. 




 

The normal ex parte appeal procedures set forth at 37 
CFR 41.31 through 37 CFR 41.54 apply in ex 
parte reexamination, except as pointed out in this 
Chapter. A third party requester may not appeal or 
otherwise participate in the appeal.

The reexamination statute does not provide for 
review of a patentability decision favoring the patentee. 
Greenwood v. Seiko Instruments, 8 USPQ2d 1455 
(D.D.C. 1988).

See MPEP § 1204 for a discussion of the 
requirements for a proper appeal. However, note that 
in the unusual circumstances where an appeal is 
defective (e.g., no proof of service is included, it was 
filed for the wrong proceeding), patent owner should 
not be advised by the examiner to obtain an extension 
of time under 37 CFR 1.136(a), because an extension 
of time under 37 CFR 1.136 cannot be obtained in a 
reexamination proceeding.

Where a notice of appeal is defective, the patent 
owner will be so notified. Form PTOL-475 will be 
used to provide the notification. The “other” box on 
the PTOL-475 will be checked where it is appropriate 
with an explanation as to why the notice of appeal is 
defective. A 1-month or 30 days, whichever is 
longer, time period will be provided for the patent 
owner to cure the defect(s) in the appeal.

If the patent owner does not timely file a notice of 
appeal and/or does not timely file the appropriate 
appeal fee, the patent owner will be notified that the 
appeal is dismissed. Form PTOL-468 will be used to 
provide the notification. The reexamination prosecution 
is then terminated, and a Notice of Intent to 
Issue Ex Parte Reexamination Certificate (NIRC) will 
subsequently be issued indicating the status of the 
claims at the time of final rejection (or after the second 
rejection of the claims, where an appeal was 
taken from that action without waiting for a final 
rejection). See MPEP § 2287.

==2274 Appeal Brief==

I.AMENDMENT

Where the appeal brief is not filed, but within the 
period allowed for filing the brief an amendment is 
presented which places the claims of the patent under 
reexamination in a patentable condition, the amendment 
may be entered. Amendments should not be 
included in the appeal brief.

As to separate amendments, i.e., amendments not 
included with the appeal brief, filed with or after the 
appeal, see MPEP § 1207.

II.TIME FOR FILING APPEAL BRIEF

The time for filing the appeal brief is 2 months 
from the date of the appeal.

III.EXTENSION OF TIME FOR FILING 
APPEAL BRIEF

In the event that the patent owner finds that he or 
she is unable to file a brief within the time allowed by 
the rules, he or she may file a petition with the appropriate 
extension of time fee, to the Central Reexamination 
Unit (CRU) or Technology Center (TC), 
requesting additional time (usually 1 month), and give 
reasons for the request. The petition should contain 
the address to which the response is to be sent. If sufficient 
cause is shown and the petition is filed prior to 
the expiration of the period sought to be extended (37 
CFR 1.550(c)), the CRU or TC Director is authorized 
to grant the extension for up to 1 month. 
Requests for extensions of time for more than 1 
month will also be decided by the CRU or TC 
Director, but will not be granted unless extraordinary 
circumstances are involved; e.g., death or incapacitation 
of the patent owner. The time extended is added 
to the last calendar day of the original period, as 
opposed to being added to the day it would have been 
due when said last day is a Saturday, Sunday, or Federal 
holiday.

IV.FAILURE TO TIMELY FILE APPEAL 
BRIEF

Failure to file the brief and/or the appeal brief fee 
within the permissible time will result in dismissal of 
the appeal. Form PTOL-468 is used to notify the 
patent owner that the appeal is dismissed. The reexamination 
prosecution is then terminated, and a 
Notice of Intent to Issue Ex Parte Reexamination Certificate 
(NIRC) (see MPEP § 2287) will subsequently 
be issued indicating the status of the claims at the time 
of appeal.




 

V.REQUIREMENTS FOR THE APPEAL 
BRIEF

A fee as set forth in 37 CFR 41.20(b)(2) is required 
when the appeal brief is filed for the first time in a 
particular reexamination proceeding, 35 U.S.C. 41(a). 
37 CFR 41.37 provides that the appellant shall file a 
brief of the authorities and arguments on which he or 
she will rely to maintain his or her appeal, including a 
summary of claimed subject matter which must refer 
to the specification by page and line number, and to 
the drawing, if any, by reference characters, and a 
copy of the claims involved. Only one copy of the 
appeal brief is required. Where the request for reexamination 
was filed by a third party requester, a copy 
of the brief must be served on that third party 
requester.

In the case of a merged proceeding (see MPEP 
§
 
2283 and § 2285), one original copy of the brief 
should be provided for each reexamination proceeding 
and reissue application in the merged proceeding. 
In addition, a copy of the brief must be served on any 
third party requesters who are part of the merged proceeding.


For the sake of convenience, the copy of the claims 
involved should be double spaced and should start on 
a new page. Note that the copy of the claims on 
appeal in reexamination proceedings must include 
all underlining and bracketing , as required by 
37 
CFR 1.530(f), to reflect the changes made to the 
original patent claims throughout the prosecution of 
the reexamination. In addition, any new claims added 
in the reexamination should be completely underlined. 
This represents a departure from the procedure 
set forth in MPEP § 1205.02 for applications.

The brief, as well as every other paper relating to an 
appeal, should indicate the number of the art unit
to which the reexamination is assigned and the reexamination 
control number. When the brief is received, 
it is forwarded to the CRU or TC (depending which 
is examining the proceeding) where it is entered in 
the file and referred to the examiner.

Patent owners are reminded that their briefs in 
appeal cases must be responsive to every ground of 
rejection stated by the examiner. A reply brief, if filed, 
shall be entered, except that amendments or affidavits 
or other evidence are subject to 37 CFR 1.116 and 
41.33. See 37 CFR 41.41(a)(2). 

It is essential that the Board of Patent Appeals and 
Interferences should be provided with a brief fully 
stating the position of the appellant with respect to 
each issue involved in the appeal so that no search of 
the record is required in order to determine that position. 
The fact that appellant may consider a ground to 
be clearly improper does not justify a failure on the 
part of the appellant to point out to the Board the reasons 
for that view in the brief.

See MPEP § 1205.02 for further discussion of the 
requirements for an appeal brief.

VI.DEFECTIVE APPEAL BRIEF

Where an appeal brief is defective, the examiner 
will notify the patent owner that the brief is defective, 
using PTOL-462R. A 1-month period is provided for 
the patent owner to cure the defect(s). Where items 1-
9 in the form do not provide the defect which has been 
found in the brief, or where more explanation is 
needed as to one of items 1-9, box 10 should be 
checked and the nature of the defect(s) explained by 
the examiner in an attachment to form PTOL-462R. 
An example of this is where an appellant patent owner 
inadvertently fails to respond by way of brief to any 
ground of rejection under a separate heading, and it is 
clear from the record which ground has not been 
responded to. In such a case, appellant should be 
notified by the examiner that he or she is given 1 
month to correct the defect by filing a supplemental 
brief.

It is important for the examiner to identify any 
defects in the brief and give the patent owner 1 month 
in which to cure the defects. Where this procedure has 
not been followed, the Board of Patent Appeals and 
Interferences (Board) may return the reexamination 
file to the examiner for compliance (i.e., for corrective 
action).

When the record clearly indicates intentional failure 
to respond by brief, to any ground of rejection, for 
example, the examiner should inform the Board of 
this fact in his or her answer and merely specify the 
claim(s) affected. Where the failure to respond by 
brief appears to be intentional, the Board may summarily 
sustain the rejection. Oral argument at the 
hearing will not remedy such deficiency of a brief.

The mere filing of any paper whatsoever entitled as 
a brief cannot necessarily be considered as compliance 
with 37 CFR 41.37. The rule requires that the 




 

brief must set forth the authorities and arguments 
relied on, and to the extent that it fails to do so with 
respect to any ground of rejection, that ground may be 
summarily sustained. A distinction must be made 
between the lack of any argument and the presentation 
of arguments that carry no conviction. In the former 
case summarily sustaining the rejection is in order, 
while in the latter case a decision on the merits is 
made, although it may well be merely an affirmance 
based on the grounds relied on by the examiner.

Appellant must traverse every ground of rejection 
set forth in the final rejection that appellant is presenting 
for review in the appeal. Oral argument at the 
hearing will not remedy a deficiency of failure to 
traverse a ground of rejection in the brief. Ignoring or 
acquiescing in any rejection, even one based upon formal 
matters which could be cured by subsequent 
amendment, will invite summarily affirmance of the 
rejection.

The reexamination prosecution is considered terminated 
as of the date of the dismissal of the appeal. 
After the appeal is dismissed, the examiner will proceed 
to issue a Notice of Intent to Issue Ex ParteReexamination Certificate for the proceeding; see 
MPEP § 2287. 

==2275 Examiner’s Answer==



37 CFR 41.39. Examiner’s answer.

(a)(1)The primary examiner may, within such time as may be 
directed by the Director, furnish a written answer to the appeal 
brief including such explanation of the invention claimed and of 
the references relied upon and grounds of rejection as may be necessary, 
supplying a copy to appellant. If the primary examiner 
determines that the appeal does not comply with the provisions of 
§§ 41.31 and 41.37 or does not relate to an appealable action, the 
primary examiner shall make such determination of record.

(b)If an examiner’s answer contains a rejection designated 
as a new ground of rejection, appellant must within two months 
from the date of the examiner’s answer exercise one of the following 
two options to avoid sua sponte dismissal of the appeal as to 
the claims subject to the new ground of rejection:

(1)Reopen prosecution. Request that prosecution be 
reopened before the primary examiner by filing a reply under § 
1.111 of this title with or without amendment or submission of 
affidavits (§§ 1.130, 1.131 or 1.132 of this title) or other evidence. 
Any amendment or submission of affidavits or other evidence 
must be relevant to the new ground of rejection. A request that 
complies with this paragraph will be entered and the application 
or the patent under ex parte reexamination will be reconsidered by 
the examiner under the provisions of § 1.112 of this title. Any 
request that prosecution be reopened under this paragraph will be 
treated as a request to withdraw the appeal.

(2)Maintain appeal. Request that the appeal be maintained 
by filing a reply brief as set forth in § 41.41. Such a reply 
brief must address each new ground of rejection as set forth in § 
41.37(c)(1)(vii) and should follow the other requirements of a 
brief as set forth in § 41.37(c). A reply brief may not be accompanied 
by any amendment, affidavit (§§ 1.130, 1.131 or 1.132 of this 
title) or other evidence. If a reply brief filed pursuant to this section 
is accompanied by any amendment, affidavit or other evidence, 
it shall be treated as a request that prosecution be reopened 
before the primary examiner under paragraph (b)(1) of this section.


(c)Extensions of time under § 1.136 (a) of this title for 
patent applications are not applicable to the time period set forth 
in this section. See § 1.136 (b) of this title for extensions of time to 
reply for patent applications and § 1.550 (c) of this title for extensions 
of time to reply for ex parte reexamination proceedings.

MPEP § 1207 through § 1207.05 relate to 
preparation of examiner’s answers in appeals. The 
procedures covered in these sections apply to appeals 
in both patent applications and patents undergoing ex 
parte reexamination proceedings, except as provided 
for in this Chapter.

Where appellant files a timely reply brief to an 
examiner’s answer or a supplemental examiner’s 
answer, the examiner may  (A) acknowledge receipt 
and entry of the reply brief,  (B)  reopen prosecution 
to respond to the reply brief, or (C) furnish a 
supplemental examiner’s answer responding to any 
new issue raised in the reply brief (see MPEP § 
1207.05 for information on supplemental examiner’s 
answer). See 37 CFR 41.43(a). A supplemental 
examiner’s answer responding to a reply brief 
may not include a new ground of rejection. See 37 
CFR 41.43(a)(2). A supplemental examiner’s answer, 
other than to respond to any new issue raised in the 
reply brief, is not permitted unless the reexamination 
proceeding has been remanded by the Board of 
Patent Appeals and Interferences for such purposes.

==2276 Oral Hearing==

If appellant (patent owner) desires an oral hearing, 
appellant must file a written request for such hearing 
accompanied by the fee set forth in 37 CFR 
41.20(b)(3) within 2 months after the date of the 
examiner’s answer or supplemental examiner’s 
answer. The time for requesting an oral hearing may 
not be extended. 37 CFR 41.73(b). No appellant will 
be permitted to participate in an oral hearing unless he 




 

or she has requested an oral hearing and submitted the 
fee set forth in 37 CFR 41.20(b)(3).

Where the appeal involves reexamination proceedings, 
oral hearings are open to the public as observers 
(subject to the admittance procedures established by 
the Board), unless the appellant (A) petitions under 
37 CFR 41.3 that the hearing not be open to the public, 
 (B) presents sufficient reasons for such a 
request, (C) pays the petition fee set forth in 37 CFR 
41.20(a), and (D) the petition is granted.

MPEP § 1209 relates to oral hearings in appeals in 
both patent applications and ex parte reexamination 
proceedings.

==2277 Board of Patent Appeals and Interferences Decision==

MPEP § 1213 through § 1213.03 relate to decisions 
of the Board of Patent Appeals and Interferences 
for both applications and ex parte
reexamination proceedings.

==2278 Action Following Decision==

MPEP § 1214 through § 1214.07 provide the procedures 
to be followed after the conclusion of the 
appeal to the Board of Patent Appeals and Interferences, 
for both patent applications and ex parte
reexamination proceedings, except as provided for in 
this Chapter.

==2279 Appeal to Courts==

A patent owner who is not satisfied with the 
decision of the Board of Patent Appeals and Interferences 
may seek judicial review.

In an ex parte reexamination filed before November 
29, 1999, the patent owner may appeal the decision 
of the Board of Patent Appeals and Interferences 
to either (A) the United States Court of Appeals 
for 
the Federal Circuit pursuant to 35 U.S.C. 141, 
or 
(B)
 
the United States District Court for the District 
of 
Columbia pursuant to 35 U.S.C. 145. This is 
based 
on the version of 35 U.S.C. 141 and 
35 
U.S.C.
 
145 in existence prior to the amendment of 
the reexamination statute on November 29, 1999 by 
Public Law 106-113. This “prior version” of 
35 
U.S.C. 141 and 35 U.S.C. 145 applies to appeals in 
reexamination, where the reexamination was filed in 
the Office before November 29, 1999. See Section 
13202(d) of Public Law 107-273.

In an ex parte reexamination filed on or afterNovember 29, 1999, the patent owner may appeal the 
decision of the Board of Patent Appeals and Interferences 
only to the United States Court of Appeals for 
the Federal Circuit pursuant to 35 U.S.C. 141. This is 
based on the current version of 35 U.S.C. 141 and 
35 
U.S.C. 145 as they were amended by Public Law 
106-113. This “current version” of 35 U.S.C. 141 and 
35 U.S.C. 145 applies to appeals in reexamination, 
where the reexamination was filed in the Office on or 
after November 29, 1999. See Section 13202(d) of 
Public Law 107-273. 

A third party requester of an ex parte reexamination 
may not seek judicial review. Yuasa Battery v. 
Comm’r, 3 USPQ2d 1143 (D.D.C. 1987).

While the reexamination statutory provisions do 
not provide for participation by any third party 
requester during any court review, the courts have 
permitted intervention by a third party requester in 
appropriate circumstances. See In re Etter, 756 F.2d 
852, 225 USPQ 1 (Fed. Cir. 1985) and Reed v. Quigg, 
230 USPQ 62 (D.D.C. 1986). See also MPEP § 1216, 
§ 1216.01, and § 1216.02. A third party requester who 
is permitted to intervene in a civil action has no standing 
to appeal the court’s decision, Boeing Co. v. 
Comm’r, 853 F.2d 878, 7 USPQ2d 1487 (Fed. Cir. 
1988).

==2280 Information Material to Patentability in Reexamination Proceeding==

37 CFR 1.555. Information material to patentability in ex 
parte reexamination and inter partes reexamination 
proceedings.

(a)A patent by its very nature is affected with a public interest. 
The public interest is best served, and the most effective reexamination 
occurs when, at the time a reexamination proceeding is 
being conducted, the Office is aware of and evaluates the teachings 
of all information material to patentability in a reexamination 
proceeding. Each individual associated with the patent owner in a 
reexamination proceeding has a duty of candor and good faith in 
dealing with the Office, which includes a duty to disclose to the 
Office all information known to that individual to be material to 
patentability in a reexamination proceeding. The individuals who 
have a duty to disclose to the Office all information known to 
them to be material to patentability in a reexamination proceeding 
are the patent owner, each attorney or agent who represents the 
patent owner, and every other individual who is substantively 




 

involved on behalf of the patent owner in a reexamination proceeding. 
The duty to disclose the information exists with respect 
to each claim pending in the reexamination proceeding until the 
claim is cancelled. Information material to the patentability of a 
cancelled claim need not be submitted if the information is not 
material to patentability of any claim remaining under consideration 
in the reexamination proceeding. The duty to disclose all 
information known to be material to patentability in a reexamination 
proceeding is deemed to be satisfied if all information known 
to be material to patentability of any claim in the patent after issuance 
of the reexamination certificate was cited by the Office or 
submitted to the Office in an information disclosure statement. 
However, the duties of candor, good faith, and disclosure have not 
been complied with if any fraud on the Office was practiced or 
attempted or the duty of disclosure was violated through bad faith 
or intentional misconduct by, or on behalf of, the patent owner in 
the reexamination proceeding. Any information disclosure statement 
must be filed with the items listed in § 1.98(a) as applied to 
individuals associated with the patent owner in a reexamination 
proceeding, and should be filed within two months of the date of 
the order for reexamination, or as soon thereafter as possible.

(b)Under this section, information is material to patentability 
in a reexamination proceeding when it is not cumulative to 
information of record or being made of record in the reexamination 
proceeding, and

(1)It is a patent or printed publication that establishes, by 
itself or in combination with other patents or printed publications, 
a prima facie case of unpatentability of a claim; or

(2)It refutes, or is inconsistent with, a position the patent 
owner takes in:

(i)Opposing an argument of unpatentability relied on 
by the Office, or

(ii)Asserting an argument of patentability.

A prima facie case of unpatentability of a claim pending in a 
reexamination proceeding is established when the information 
compels a conclusion that a claim is unpatentable under the preponderance 
of evidence, burden-of-proof standard, giving each 
term in the claim its broadest reasonable construction consistent 
with the specification, and before any consideration is given to 
evidence which may be submitted in an attempt to establish a contrary 
conclusion of patentability.

(c)The responsibility for compliance with this section rests 
upon the individuals designated in paragraph (a) of this section 
and no evaluation will be made by the Office in the reexamination 
proceeding as to compliance with this section. If questions of 
compliance with this section are raised by the patent owner or the 
third party requester during a reexamination proceeding, they will 
be noted as unresolved questions in accordance with § 1.552(c).

The duty of disclosure in reexamination proceedings 
applies to the patent owner; to each attorney or 
agent who represents the patent owner, and to every 
other individual who is substantively involved on 
behalf of the patent owner. That duty is a continuing 
obligation on all such individuals throughout the proceeding. 
The continuing obligation during the reexamination 
proceeding is that any such individual to 
whom the duty applies who is aware of, or becomes 
aware of, patents or printed publications which (A) 
are material to patentability in a reexamination proceeding, 
and (B) which have not previously been 
made of record in the patent file, must bring such patents 
or printed publications to the attention of the 
Office.

Such individuals are strongly encouraged to file 
information disclosure statements  in accordance 
with 37 CFR 1.98, within two months of the date of 
the order to reexamine, or as soon thereafter as possible, 
in order to bring the patents or printed publications 
to the attention of the Office. An information 
disclosure statement filed under 37 CFR 1.555 by the 
patent owner after the order for reexamination and 
before the first action on the merits may be submitted 
as part of the statement under 37 CFR 1.530, or it may 
be filed as a separate paper. If the information disclosure 
statement is filed as part of a statement under 37 
CFR 1.530, the submission may include a discussion 
of the patentability issues in the reexamination. If, 
however, the submission is filed as a separate paper, 
not part of a statement under 37 CFR 1.530, the submission 
must be limited to a listing of the information 
disclosed and an explanation of its relevance. See 37 
CFR 1.98. Any discussion of the information disclosed 
relating to patentability issues in the reexamination 
would be improper.

It is to be noted that, to comply with 37 CFR 
1.98(a) as to documents cited in the patent or its parent 
applications that a party wishes to submit, the 
party must supply copies of the information. The 
exception to the requirement for copies noted in 
37 
CFR 1.98(d) does not apply to ex parte and inter 
partes reexamination proceedings, since a reexamination 
proceeding does not rely on the patent for an earlier 
effective filing date.

Any individual substantively involved in the reexamination 
proceeding may satisfy his or her duty by 
disclosing the information to the attorney or agent 
having responsibility for the reexamination proceeding 
or to a patent owner acting in his or her own 
behalf. A patent owner may satisfy his or her duty by 
disclosing the information to the attorney or agent 
having responsibility for the reexamination proceeding. 
An attorney, agent, or patent owner who receives 
information has no duty to submit such information if 




 

it is not material to patentability in the reexamination 
proceeding. See 37 CFR 1.555(b) for the definition of 
“material to patentability.”

The responsibility of compliance with 37 CFR 
1.555 rests on all such individuals. Any fraud practiced 
or attempted on the Office or any violation of the 
duty of disclosure through bad faith or intentional 
misconduct by any such individual results in noncompliance 
with 37 CFR 1.555(a). This duty of disclosure 
is consistent with the duty placed on patent applicants 
by 37 CFR 1.56. Any such issues raised by the patent 
owner or the third party requester during a reexamination 
proceeding will merely be noted as unresolved 
questions under 37 CFR 1.552(c).

All such individuals who fail to comply with 
37 
CFR 1.555(a) do so at the risk of diminishing the 
quality and reliability of the reexamination certificate 
issuing from the proceeding.

See MPEP § 2282 (ex parte reexamination) and 
MPEP § 2686 (inter partes reexamination) for the 
patent owner’s duty to disclose prior or concurrent 
proceedings in which the patent is or was involved.

==2281 Interviews in Ex Parte Reexamination Proceedings==

37 CFR 1.560. Interviews in ex parte reexamination 
proceedings.

(a)Interviews in ex parte reexamination proceedings pending 
before the Office between examiners and the owners of such 
patents or their attorneys or agents of record must be conducted in 
the Office at such times, within Office hours, as the respective 
examiners may designate. Interviews will not be permitted at any 
other time or place without the authority of the Director. Interviews 
for the discussion of the patentability of claims in patents 
involved in ex parte reexamination proceedings will not be conducted 
prior to the first official action. Interviews should be 
arranged in advance. Requests that reexamination requesters participate 
in interviews with examiners will not be granted.

(b)In every instance of an interview with an examiner in an 
ex parte reexamination proceeding, a complete written statement 
of the reasons presented at the interview as warranting favorable 
action must be filed by the patent owner. An interview does not 
remove the necessity for response to Office actions as specified in 
§ 1.111. Patent owner’s response to an outstanding Office action 
after the interview does not remove the necessity for filing the 
written statement. The written statement must be filed as a separate 
part of a response to an Office action outstanding at the time 
of the interview, or as a separate paper within one month from the 
date of the interview, whichever is later.

 Interviews are permitted in an ex parte reexamination 
proceeding. In the ex parte proceeding, only ex 
parte interviews between the examiner and patent 
owner and/or the patent owner’s representative 
are 
permitted. Requests by third party requesters to 
participate in interviews or to attend interviews will 
not be granted.

Unless the Office of Patent Legal Administration 
authorizes otherwise, interviews between examiner 
and the owners of patents undergoing ex parte reexamination 
or their attorneys or agents must be had in 
the Office at such times, within Office hours, as the 
respective examiners may designate.

Where a panel review has been conducted for an 
action in a reexamination proceeding, every effort 
will be made to have the panel members present at an 
interview requested by the patent owner to discuss 
that action. An interview such as a telephone interview 
initiated by the examiner to obtain an amendment 
to allow the case will not have the panel member 
participating in the telephone interview.

Interviews for the discussion of the patentability of 
claims in patents involved in reexamination proceedings 
will ordinarily not be had prior to the first Office 
action following the order for reexamination and any 
submissions pursuant to 37 CFR 1.530 and 1.535. 
Such interviews will be permitted prior to the first 
Office action only where the examiner initiates the 
interview for the purpose of providing an amendment 
which will make the claims patentable and the patent 
owner’s role is passive. The patent owner’s role (or 
patent owner’s attorney or agent) is limited to agreeing 
to the change or not. The patent owner should not 
otherwise discuss the case on the merits during this 
interview.

The patent owner’s questions on purely procedural 
matters may be answered by the examiner at any time 
during the proceeding.

Where any party who is not the patent owner 
requests information as to the merits of a reexamination 
proceeding, the examiner will not conduct a personal 
or telephone interview with that party to provide 
the information. Only questions on strictly procedural 
matters, i.e., not directed to any specific reexamination 
proceeding, may be discussed with that party. 
The party who is not the patent owner should be 
referred by the examiner to the Technology Center 
(TC) or Central Reexamination Unit (CRU) Special 
Program Examiner (for the examiner’s TC or CRU 
unit) to address any such questions on strictly proce





 

dural matters. See MPEP § 2212.01. The following 
guidelines are to be followed in determining whether 
a question is strictly directed to a procedural matter: 
(A) any information which a person could obtain by 
reading the file (which is open to the public) is procedural, 
and it may be discussed; (B) a matter not available 
from a reading of the file is considered as relating 
to the merits of the proceeding, and may not be discussed. 
Thus, for example, a question relating to when 
the next Office action will be rendered is improper as 
it relates to the merits of the proceeding (because this 
information cannot be obtained from a reading of the 
file). Such a question by a party who is not the patent 
owner should not be responded to by the examiner 
or any other official.

The examiner must complete an Ex Parte Interview 
Summary form PTOL-474 for each interview 
held where a matter of substance has been discussed 
(see MPEP § 713.04). A copy of the form should be 
given to the patent owner at the conclusion of the 
interview. The original should be made of record in 
the reexamination file, and a copy should be mailed to 
any third party requester.

The general procedure for conducting interviews 
and recording same is described at MPEP § 713.01 - 
§ 713.04. 

Pursuant to 35 U.S.C. 305, however, “[a]ll reexamination 
proceedings … will be conducted with special 
dispatch within the Office.” Accordingly, there 
are additional procedural requirements to facilitate the 
statutory mandate for “special dispatch.”

In the case where the patent owner desires to initiate 
an interview, the patent owner should initially 
contact the examiner in charge of the proceeding to 
indicate what issues are sought to be discussed, and to 
determine if an interview will be granted. If the examiner 
agrees to grant the interview, the patent owner 
must file, at least three (3) working days prior to the 
interview, a written statement of the issues to be discussed 
at the interview, and a copy of any proposed 
claims to be discussed, unless examiner waives this 
requirement. This provision will provide structure to 
the interview so as to facilitate the statutory mandate 
for special dispatch.

The duration of the interview will not exceed one 
hour, unless the patent owner files a petition under 
37 
CFR 1.182 showing sufficient cause where more 
time is needed. In a reexamination proceeding, the 
invention should be well defined after the patent has 
issued, and it is simply a matter of defining the claims 
over art applied, to the extent such is deemed necessary. 
An hour of time in a structured planned interview 
should be sufficient to accomplish this, and in 
those rare instances where it is not, a patent owner 
may show cause to extend the time. During the interview, 
the examiner is always free to extend the duration 
of the interview to discuss issues that the 
examiner deems appropriate for (further) discussion. 
Such an extension of the duration of the interview is 
permitted at the examiner’s sole discretion.

Only one interview may be requested after an 
Office action and prior to filing the response to that 
action, absent a showing of good cause to conduct a 
second interview during this period.

PATENT OWNER’S STATEMENT OF THEINTERVIEW

In every instance of an interview with the examiner, 
a patent owner’s statement of the interview, including 
a complete written statement of the reasons presented 
at the interview as warranting favorable action, must 
be filed by the patent owner. 37 CFR 1.560(b). The 
written statement must be filed either as a separate 
paper within one month after the date of the interview, 
or as a separate part of a response to an outstanding 
Office action, whichever is later. 

The requirement for a patent owner’s statement of 
the interview cannot be waived by the examiner. It 
should be noted that, pursuant to 37 CFR 1.550(d), the 
failure to file a written statement of an interview as 
required under 37 CFR 1.560(b) will result in the termination 
of the reexamination prosecution (in the 
same way that failure to timely respond to an Office 
action results in the termination of the reexamination 
prosecution).

==2282 Notification of Existence of Prior or Concurrent Proceedings and Decisions Thereon==

37 CFR 1.565. Concurrent office proceedings which 
include an ex parte reexamination proceeding.

(a)In an ex parte reexamination proceeding before the 
Office, the patent owner must inform the Office of any prior or 
concurrent proceedings in which the patent is or was involved 
such as interferences, reissues, ex parte reexaminations, inter 
partes reexaminations, or litigation and the results of such pro





 

ceedings. See § 1.985 for notification of prior or concurrent proceedings 
in an inter partes reexamination proceeding.



It is important for the Office to be aware of 
any 
prior or concurrent proceedings in which a 
patent 
undergoing ex parte reexamination is or 
was 
involved, such as interferences, reissues, inter 
partes reexaminations, other ex parte reexaminations 
or litigations, and any results of such proceedings. In 
accordance with 37 CFR 1.565(a), the patent owner 
is required to provide the Office with information 
regarding the existence of any such proceedings, and 
the results thereof, if known. Ordinarily, no submissions 
of any kind by third parties filed after the date of 
the order are entered into the reexamination or patent 
file while the reexamination proceeding is pending. 
However, in order to ensure a complete file, with 
updated status information regarding prior or concurrent 
proceedings regarding the patent under reexamination, 
the Office will, at any time, accept from any 
parties, for entry into the reexamination file, copies of 
notices of suits and other proceedings involving the 
patent and copies of decisions or papers filed in the 
court from litigations or other proceedings involving 
the patent. It is to be noted that if the Office, in its 
sole discretion, deems the volume of the papers filed 
from litigations or other proceedings to be too extensive/
lengthy, the Office may return all or part of the 
submission. In such an instance, a party may limit the 
submission in accordance with what is deemed relevant, 
and resubmit the papers. Persons making such 
submissions must limit the submissions to the notification, 
and must not include further arguments or 
information. Where a submission is not limited to 
bare notice of the prior or concurrent proceedings (in 
which a patent undergoing reexamination is or was 
involved), the submission will be returned by the 
Office. It is to be understood that highlighting of certain 
text by underlining, fluorescent marker, etc., goes 
beyond bare notice of the prior or concurrent proceedings.


Any proper submission pursuant to 37 CFR 
1.565(a) will be promptly entered into the record of 
the reexamination file, and will be considered by the 
examiner as to its content, when the proceeding 
comes up for action on the merits. Thus, for example, 
if the patent owner properly files in a reexamination 
proceeding, pursuant to 37 CFR 1.565(a), an Information 
Disclosure Statement (IDS) that was submitted 
by a third party in the discovery stage of litigation of 
the patent being reexamined, the IDS would be 
entered into the reexamination file and considered by 
the examiner, the next time the proceeding comes up 
for action on the merits. See MPEP § 2286 for Office 
investigation for prior or concurrent litigation.

==2283 Multiple Copending Ex Parte Reexamination Proceedings==

37 CFR 1.565. Concurrent Office proceedings which 
include an ex parte reexamination proceeding.



(c) If ex parte reexamination is ordered while a prior ex partereexamination proceeding is pending and prosecution in the prior 
ex parte reexamination proceeding has not been terminated, the ex 
parte reexamination proceedings will be consolidated and result 
in the issuance of a single certificate under § 1.570. For merger of 
inter partes reexamination proceedings, see § 1.989(a). For 
merger of ex parte reexamination and inter partes reexamination 
proceedings, see §
 
1.989(b).






 

This section discusses multiple copending reexamination 
requests which are filed on the same patent, 
where none of the requests is an inter partes request. 
If one of the multiple copending reexamination 
requests is an inter partes request, see MPEP 
§
 
2686.01.

 In order for a second or subsequent request for ex 
parte reexamination to be granted, a substantial new 
question of patentability must be raised by the art 
(patents and/or printed publications) cited in the second 
or subsequent request for reexamination. MPEP 
§
 
2240 provides a discussion as to whether a substantial 
new question of patentability is raised by the prior 
art cited in a second or subsequent request for reexamination 
filed while a reexamination proceeding is 
pending.

If the second or subsequent request is granted, the 
decision on whether or not to combine the proceedings 
will be made by the Central Reexamination 
Unit (CRU) Director where the reexamination is 
pending. The CRU Director may delegate this to 
the  Special Program Examiner (SPRE). No decision 
on combining the reexaminations should be made 
until reexamination is actually ordered in the later 
filed request for reexamination.

I.PROCEEDINGS MERGED

If a second request for reexamination is filed 
prior to the issuance of a Notice of Intent to Issue 
a Reexamination Certificate for the first reexamination 
proceeding, the proceedings generally will be 
merged. In this situation, the second request is 
decided based on the original patent claims, and if 
reexamination is ordered, the reexamination proceedings 
generally would be merged.

After the patent owner and second requester have 
been given an opportunity to file a statement and 
reply, respectively, the second reexamination proceeding 
generally will be merged with the first reexamination 
proceeding, and prosecution will then 
continue at the most advanced point possible for the 
first proceeding. It should be noted that if a final 
rejection has been issued in the first proceeding, prosecution 
will be ordinarily be reopened where any of 
the new patents or printed publications presented in 
the second request are applied to the merged proceeding 
in a new ground of rejection.

The patent owner will be provided with an opportunity 
to respond to any new rejection in a merged reexamination 
proceeding prior to the action being made 
final. See MPEP § 2271. If the reexamination proceedings 
are merged, a single certificate will be issued 
based upon the merged proceedings, 37 CFR 
1.565(c).

II.WHEN PROCEEDING IS SUSPENDED

It may also be desirable in certain situations to suspend 
a proceeding for a short and specified period of 
time. For example, a suspension of a first reexamination 
proceeding may be issued to allow time for the 
patent owner’s statement and the requester’s reply in a 
second proceeding prior to merging. Further, after the 
second proceeding has been ordered, it may be desirable 
to suspend the second proceeding where the first 
proceeding is presently on appeal before a Federal 
court to await the court’s decision prior to merging. A 
suspension will only be granted in extraordinary 
instances, because of the statutory requirements that 
examination proceed with “special dispatch.” The 
express written approval of the CRU or Technology 
Center (TC) Director must be obtained. Suspension 
will not be granted when there is an outstanding 
Office action.

III.MERGER OF REEXAMINATIONS

The following guidelines should be observed when 
two requests for reexamination directed to a single 
patent have been filed.

The second request (i.e., Request 2) should be processed 
as quickly as possible and assigned to the same 
examiner to whom the first request (i.e., Request 1) is 
assigned. Request 2 should be decided immediately 
without waiting the usual period (e.g., for submission 
of art). If Request 2 is denied, ex parte prosecution of 
Request 1 should continue. If Request 2 is granted, 
the order in the second proceeding should be mailed 
immediately. The two requests should be held in storage 
until the patent owner’s statement and any reply 
by the requester have been received in Request 2, or 
until the time for filing same expires. Then, the 
CRU Director or the CRU Director’s delegate 
will prepare a decision whether to merge the two 
proceedings.

A decision by the CRU Director to 
merge the reexamination proceedings should include 




 

a requirement that the patent owner maintain identical 
claims in both files. It will further require that 
responses by the patent owner, and any other paper 
filed in the merged proceeding, must consist of a single 
response, addressed to both files, filed in duplicate, 
each bearing a signature and containing 
identifying data for both files, for entry in both files. 
The decision will point out that both files will be 
maintained as separate complete files. Where the 
claims are not the same in both files, the decision of 
merger will indicate at its conclusion that the patent 
owner is given 1 
month to provide an amendment to 
make the claims the same in each file. Where the 
claims are already the same in both files, the decision 
will indicate at its conclusion that an Office action 
will be mailed in due course, and that the patent 
owner need not take any action at present. The decision 
of merger will be mailed immediately.

Where the merger decision indicates that an Office 
action will follow, the merged proceeding is returned 
to the examiner immediately after the decision to 
issue an Office action. Where the merger decision 
indicates that the patent owner is given 1 month to 
provide an amendment to make the claims the same in 
each file (identical amendments to be placed in all 
files), the Office of the  SPRE will retain jurisdiction 
over the merged reexamination proceeding to await 
submission of the amendment or the expiration of the 
time to submit the amendment. After the amendment 
is received and processed by the technical support 
staff or the time for submitting the amendment 
expires, the merged proceeding will be returned to the 
examiner to issue an Office action.

Once the merged proceeding is returned to the 
examiner for issuance of an Office action, the examiner 
should prepare an Office action at the most 
advanced point possible for the first proceeding. 
Thus, if the first proceeding is ready for a final rejection 
and the second proceeding does not provide any 
new information which would call for a new ground 
of rejection, the examiner should issue a final rejection 
for the merged proceeding using the guidelines 
for the prosecution stage set forth below.

If the ex parte prosecution stage has not yet begun 
in Request 1 when Request 2 is received, Request 1 
should be processed to the point where it is ready for 
ex parte prosecution. Then, Request 1 is normally 
held until Request 2 is granted and is ready for ex 
parte action following the statement and reply. 
Thereafter, the two proceedings would be merged. 
However, if Request 2 is denied, there would be no 
merger and prosecution will be carried out solely on 
Request 1. Note that Request 2 should be determined 
on its own merits and should not rely on nor refer to 
the decision issued in Request 1.

In the event that an amendment to make the claims 
the same in each file is required by the merger decision 
(identical amendments to be placed in all files) 
but is not timely submitted, any claim that does not 
contain identical text in all of the merged proceedings 
should be rejected under 35 
U.S.C. 112, second paragraph, 
as being indefinite as to the content of the 
claim, and thus failing to particularly point out the 
invention.

IV.THE PROSECUTION STAGE, AFTER 
MERGER

When prosecution is appropriate in merged proceedings, 
a single combined examiner’s action will be 
prepared. Each action will contain the control number 
of the two proceedings on every page. A single action 
cover form (having both control numbers penned in at 
the top) will be provided by the examiner to the clerical 
staff. The clerical staff will copy the action cover 
form, and then use the PALM printer to print the 
appropriate data (A) on the original for the first 
request and (B) on the copy for the second request. 
Each requester will receive a copy of the action and 
both action cover forms, with the transmission form 
PTOL-465 placed on top of the package. The patent 
owner will get a copy of both action cover forms and 
the action itself. 

When a “Notice Of Intent To Issue Ex Parte Reexamination 
Certificate” (NIRC) is appropriate, plural 
notices will be printed. Both reexamination files will 
then be processed. The TC or the CRU should prepare 
the file of the concurrent proceedings in the manner 
specified in MPEP §
 
2287 before release to Office 
of Publications.

The above guidelines should be extended to those 
situations where more than two requests for reexamination 
are filed for a single patent.

V.PROCEEDINGS NOT MERGED

Pursuant to 35 U.S.C. 305, “[a]ll reexamination 
proceedings under this section…will be conducted 




 

with special dispatch within the Office.” This statutory 
provision is grounded on the need for certainty 
and finality as to the question of patentability raised 
by the request for reexamination. Thus, if a second 
request for reexamination is filed after the issuance of 
a Notice of Intent to Issue a Reexamination Certificate 
for the first reexamination proceeding, the two 
proceedings generally will not be merged. If the 
Office were to merge the two processings, the first 
reexamination proceeding would need to be withdrawn 
from its processing for ultimate publication of 
a reexamination certificate, thus delaying, instead of 
advancing, prosecution. This would run contrary to 
the statutory “special dispatch” requirement of 35 
U.S.C. 305 and its intent. On the other hand, if the 
Office does not merge, the first reexamination proceeding 
can be concluded, and any substantial new 
question of patentability raised by the second reexamination 
request can be resolved in the second proceeding, 
with no delay resulting. The second request is 
then considered based on the claims in the patent as 
indicated in the issued reexamination certificate, 
rather than the original claims of the patent. However, 
the Office always retains the authority to merge 
because in some instances, it may be more efficient to 
merge the two proceedings, which would foster “special 
dispatch.”

Even prior to the issuance of a Notice of Intent to 
Issue a Reexamination Certificate for the first reexamination 
proceeding, there are instances where the 
Office does not merge an ongoing reexamination proceeding 
with a subsequent reexamination proceeding, 
which instances are addressed on a case-by-case 
basis. For example: If an ongoing reexamination proceeding 
is ready for decision by the Board of Patent 
Appeals and Interferences, or is on appeal to the U.S. 
Court of Appeals for the Federal Circuit, it would be 
inefficient (and contrary to the statutory mandate for 
special dispatch) to “pull back” the ongoing reexamination 
proceeding for merger with a subsequent reexamination. 
As another example, an ongoing 
reexamination proceeding might be directed to one set 
of claims for which a first accused infringer (with 
respect to the first set) has filed the ongoing request 
for reexamination. A later reexamination request 
might then be directed to a different set of claims for 
which a second accused infringer (with respect to the 
second set) has filed the request. (See MPEP § 2240regarding reexamination of fewer than all the patent 
claims.) In this instance, where there are simply no 
claims in common, merger would serve only to delay 
the resolution of the first proceeding. Since reexamination 
was enacted as an effective alternative to litigation, 
the ability to decide the question of whether to 
merge based on the merits of a particular fact pattern 
must be reserved to the Office.

For processing of the second reexamination proceeding, 
see MPEP § 2295.

VI.FEES IN MERGED PROCEEDINGS

Where the proceedings have been merged and a 
paper is filed which requires payment of a fee (e.g., 
excess claim fee, fee for request for extension of time, 
petition fee, appeal fee, brief fee, oral hearing fee), 
only a single fee need be paid. For example, only one 
fee need be paid for an appeal brief even though the 
brief relates to merged multiple proceedings and copies 
must be filed for each file in the merged proceeding.


VII.PETITION TO MERGE MULTIPLE 
COPENDING REEXAMINATION PROCEEDINGS 


No petition to merge multiple reexamination proceedings 
is necessary since the Office will generally, 
sua sponte, make a decision as to whether or not it is 
appropriate to merge the multiple reexamination proceedings. 
If any petition to merge the proceedings is 
filed prior to the determination (37 CFR 1.515) and 
order to reexamine (37 CFR 1.525) on the second 
request, it will not be considered but will be returned 
to the party submitting the same by the CRU
Director. The decision returning such a premature 
petition will be made of record in both reexamination 
files, but no copy of the petition will be retained by 
the Office. See MPEP § 2267.

While the patent owner can file a petition to merge 
the proceedings at any time after the order to reexamine 
(37 CFR 1.525) on the second request, the better 
practice is to include any such petition with the patent 
owner’s statement under 37 CFR 1.530, in the event 
the CRU Director has not acted prior to that date 
to merge the multiple reexamination proceedings. If 
the requester of any of the multiple reexamination 
proceedings is not the patent owner, that party may 
petition to merge the proceedings as a part of a reply 




 

pursuant to 37 CFR 1.535 in the event the CRU
Director has not acted prior to that date to merge the 
multiple proceedings. A petition to merge the multiple 
proceedings which is filed by a party other than the 
patent owner or one of the requesters of the reexamination 
will not be considered but will be returned to 
that party by the CRU Director as being improper 
under 37 CFR 1.550(g).

All decisions on the merits of petitions to merge 
multiple reexamination proceedings will be made by 
the CRU Director (or to the CRU Special Program 
Examiner, if the CRU Director delegates it 
to him or her).

==2284 Copending Ex Parte Reexamination and Interference Proceedings==

37 CFR 1.565. Concurrent office proceedings which 
include an ex parte reexamination proceeding.

(a)In an ex parte reexamination proceeding before the 
Office, the patent owner must inform the Office of any prior or 
concurrent proceedings in which the patent is or was involved 
such as interferences, reissues, ex parte reexaminations, inter 
partes reexaminations, or litigation and the results of such proceedings. 
See § 1.985 for notification of prior or concurrent proceedings 
in an inter partes reexamination proceeding.



(e)If a patent in the process of ex parte reexamination is or 
becomes involved in an interference, the Director may suspend 
the reexamination or the interference. The Director will not consider 
a request to suspend an interference unless a motion 
(§
 
41.121(a)(3) of this title) to suspend the interference has been 
presented to, and denied by, an administrative patent judge, and 
the request is filed within ten (10) days of a decision by an administrative 
patent judge denying the motion for suspension or such 
other time as the administrative patent judge may set. For concurrent 
inter partes reexamination and interference of a patent, see 
§
 
1.993.

37 CFR 41.8. Mandatory notices.

(a)In an appeal brief (§§ 41.37, 41.67, or 41.68) or at the 
initiation of a contested case (§ 41.101), and within 20 days of any 
change during the proceeding, a party must identify:

(1)Its real party-in-interest, and

(2)Each judicial or administrative proceeding that could 
affect, or be affected by, the Board proceeding.

(b)For contested cases, a party seeking judicial review of a 
Board proceeding must file a notice with the Board of the judicial 
review within 20 days of the filing of the complaint or the notice 
of appeal. The notice to the Board must include a copy of the 
complaint or notice of appeal. See also §§ 1.301 to 1.304 of this 
title.

37 CFR 41.102. Completion of examination.

 Before a contested case is initiated, except as the Board may 
otherwise 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 contested case, 
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 
the Board initiates a contested case. Other proceedings for the 
involved file within the Office are suspended except as the Board 
may order.

 A patent being reexamined in an ex parte reexamination 
proceeding may be involved in an interference 
proceeding with at least one application, where the 
patent and the application are claiming the same patentable 
invention, and at least one of the application’s 
claims to that invention are patentable to the applicant. 
See MPEP Chapter 2300.

The general policy of the Office is that a reexamination 
proceeding will not be delayed, or stayed, 
because of an interference or the possibility of an 
interference. The reason for this policy is the requirement 
of 35 U.S.C. 305 that all reexamination proceedings 
be conducted with “special dispatch” within the 
Office. In general, the Office will follow the practice 
of making the required and necessary decisions in the 
reexamination proceeding and, at the same time, 
going forward with the interference to the extent 
desirable. It is noted that 37 CFR 41.103 provides the 
Board with the flexibility to tailor a specific solution 
to occurrences where reexamination and interference 
proceedings for the same patent are copending, as 
such occurrences may arise. Decisions in the interference 
will take into consideration the status of the 
reexamination proceeding and what is occurring 
therein. The decision as to what actions are taken in 
the interference will, in general, be taken in accordance 
with normal interference practice.

Although a patent being reexamined via a reexamination 
proceeding may become involved in an interference 
proceeding, the reexamination proceeding 
itself can never be involved in an interference proceeding. 
See 35 U.S.C. 135 subsection (a) which 
states that “[w]henever an application is made for a 
patent which, in the opinion of the Director, would 
interfere with any pending application, or with any 
unexpired patent, an interference may be declared” 




 

(emphasis added). The reexamination proceeding is 
neither an application nor a patent.

I.ATTEMPTING TO PROVOKE AN INTERFERENCE 
WITH A PATENT INVOLVED 
IN A REEXAMINATION PROCEEDING

 When an amendment is filed in a pending application 
seeking to provoke an interference with a patent 
involved in a reexamination proceeding, the applicant 
must comply with 37 CFR 41.202(a), including identifying 
the patent under reexamination with which 
interference is sought. The corresponding application 
claims may be rejected on any applicable ground 
including, if appropriate, the prior art cited in the 
reexamination proceeding. See MPEP Chapter 2300. 
Prosecution of the application should continue as far 
as possible. If the application is placed in condition 
for allowance and still contains claims which interfere 
with claims of the patent under reexamination, then an 
interference should ordinarily be proposed between 
the application and the patent. The examiner must 
notify the Office of Patent Legal Administration 
(OPLA) before proposing the interference, and such 
an interference may not be proposed unless authorized 
by OPLA.

If the interference is not authorized (e.g., resolution 
of an issue in the reexamination proceeding is necessary 
to the interference), further action on the application 
should be suspended until the certificate on the 
reexamination proceeding has been issued and published. 
Form paragraph 23.16 may be used to notify 
applicant of the suspension.

Once the reexamination certificate has issued and 
published, the examiner should review the certificate 
to see if it makes any changes in the patent claims and 
then evaluate whether the patent still contains claims 
which interfere with claims of the application. If the 
claims do interfere, then the examiner should propose 
an interference. See MPEP Chapter 2300.

II.MOTION/REQUEST TO SUSPEND INTERFERENCE 
PENDING THE OUTCOME OF 
A REEXAMINATION PROCEEDING

A miscellaneous motion under 37 CFR 
41.121(a)(3) to suspend an interference pending the 
outcome of a reexamination proceeding may be made 
at any time during the interference by any 
party 
thereto. See 37 CFR 41.123(b) for the procedure. The 
motion must be presented to the administrative patent 
judge who will decide the motion based on the particular 
fact situation. However, suspension is not 
favored. Normally, no consideration will be given 
such a motion unless and until a reexamination order 
is issued, nor will suspension of the interference normally 
be permitted until after any motions have been 
disposed of in the interference proceeding. If the 
motion under 37 CFR 41.121(a)(3) is denied by the 
administrative patent judge, a request to stay the interference 
may be made to the Director of the USPTO 
under 37 CFR 1.565(e).

A request to stay an interference under 37 CFR 
1.565(e) will be decided by the Chief Administrative 
Patent Judge of the Board of Patent Appeals and 
Interferences.

III.REQUEST FOR REEXAMINATION 
FILED DURING INTERFERENCE

In view of the provisions of 37 CFR 1.510(a), 
“[a]ny person may, at any time during the period of 
enforceability of a patent” file a request for reexamination. 
Under 37 CFR 41.8(a), the patent owner must 
notify the Board of Patent Appeals and Interferences 
that a request for reexamination was filed, within 20 
days of receiving notice of the request having been 
filed. Where it is the patent owner that files the 
request for reexamination, the 20 days run from the 
filing date of the request, since that is when the patent 
owner “received the notice” of filing the request. Such 
requests for reexamination will be processed in the 
normal manner. No delay, or stay, of the reexamination 
will occur because the requester is not a party to 
the interference. If the examiner orders reexamination 
pursuant to 37 CFR 1.525 and subsequently rejects a 
patent claim corresponding to a count in the interference, 
the attention of the Board shall be called thereto.

IV.INTERFERENCE DECLARED WHILE 
REEXAMINATION PROCEEDING IS 
ONGOING

Under 37 CFR 1.565, the patent owner in a reexamination 
proceeding before the Office is required 
to 
notify the Office when the patent being 
reexamined 
becomes involved in an interference. To 
do so, the patent owner must file in the reexamination 
proceeding a paper giving notice of the interference 
proceeding. The requirements of 37 
CFR 1.565, and 




 

of 37 CFR 41.8(a) (see the preceding paragraph), are 
designed to keep the Office and the appropriate parties 
informed of activity which is relevant to reexamination 
and interference proceedings and, to the extent 
possible, to eliminate procedural surprise. 

V.PETITION TO STAY REEXAMINATION 
PROCEEDING BECAUSE OF INTERFERENCE


Any petition to stay a reexamination proceeding, 
because of an interference, which is filed prior to the 
determination (37 CFR 1.515) and order to reexamine 
(37 CFR 1.525) will not be considered, but will be 
returned to the party submitting the same. The decision 
returning such a premature petition will be made 
of record in the reexamination file, but no copy of the 
petition will be retained by the Office. A petition to 
stay the reexamination proceeding because of the 
interference may be filed by the patent owner as a part 
of the patent owner’s statement under 37 CFR 1.530or subsequent thereto. If a party to the interference, 
other than the patent owner, is a requester of the reexamination, 
that party may petition to stay the reexamination 
proceeding as a part of a reply pursuant to 
37 
CFR 1.535. If the other party to the interference is 
not the requester, any petition by that party is 
improper under 37 CFR 1.550(g) and will not be considered. 
Any such improper petitions will be returned 
to the party submitting the same. Premature petitions 
to stay the reexamination proceedings, i.e., those filed 
prior to the determination (37 CFR 1.515) and order 
to reexamine (37 CFR 1.525), will be returned by the 
Central Reexamination Unit (CRU) or Technology 
Center (TC) Director as premature. Petitions to stay 
filed subsequent to the date of the order for reexamination 
will be referred to the OPLA for decision. All 
decisions on the merits of petitions to stay a reexamination 
proceeding because of an interference will be 
made in the OPLA.

VI.ACTION IN INTERFERENCE FOLLOWING 
REEXAMINATION

If one or more claims of a patent which is involved 
in an interference are canceled or amended by the 
issuance and publication of a reexamination certificate, 
the Board must be promptly notified.

Upon issuance and publication of the reexamination 
certificate, the patent owner must notify the 
administrative patent judge thereof.

==2285 Copending Ex Parte Reexamination and Reissue Proceedings==

37 CFR 1.565. Concurrent office proceedings which 
include an ex parte reexamination proceeding.



(d)If a reissue application and an ex parte reexamination 
proceeding on which an order pursuant to §
 
1.525 has been mailed 
are pending concurrently on a patent, a decision will normally be 
made to merge the two proceedings or to suspend one of the two 
proceedings. Where merger of a reissue application and an ex 
parte reexamination proceeding is ordered, the merged examination 
will be conducted in accordance with §§ 1.171 through 1.179, 
and the patent owner will be required to place and maintain the 
same claims in the reissue application and the ex parte reexamination 
proceeding during the pendency of the merged proceeding. 
The examiner’s actions and responses by the patent owner in a 
merged proceeding will apply to both the reissue application and 
the ex parte reexamination proceeding and be physically entered 
into both files. Any ex parte reexamination proceeding merged 
with a reissue application shall be terminated by the grant of the 
reissued patent. For merger of a reissue application and an inter 
partes reexamination, see §
 
1.991.



The general policy of the Office is that a reissue 
application examination and an ex parte reexamination 
proceeding will not be conducted separately at 
the same time as to a particular patent. The reason for 
this policy is to permit timely resolution of both proceedings 
to the extent possible and to prevent inconsistent, 
and possibly conflicting, amendments from 
being introduced into the two proceedings on behalf 
of the patent owner. Accordingly, if both a reissue 
application and an ex parte reexamination proceeding 
are pending concurrently on a patent, a decision will 
normally be made (A) to merge the two proceedings 
or (B) to stay one of the two proceedings. See In re 
Onda, 229 USPQ 235 (Comm’r Pat. 1985). The decision 
as to whether the proceedings are to be merged, 
or which proceeding (if any) is to be stayed is made in 
the Office of Patent Legal Administration (OPLA). 

Where a reissue application and a reexamination 
proceeding are pending concurrently on a patent, the 
patent owner, i.e., the reissue applicant, has a responsibility 
to notify the Office of such. 37 CFR 1.178(b), 




 

1.565(a), and 1.985. The patent owner should file in 
the reissue application, as early as possible, a Notification 
of Concurrent Proceedings pursuant to 37 CFR 
1.178(b) in order to notify the Office in the reissue 
application of the existence of the reexamination proceeding 
on the same patent. See MPEP § 1418. In 
addition, the patent owner should file in the reexamination 
proceeding, as early as possible, a Notification 
of Concurrent Proceedings pursuant to 37 CFR 
1.565(a) or 1.985 (depending on whether the reexamination 
proceeding is an ex parte reexamination proceeding 
or an inter partes reexamination proceeding) 
to notify the Office in the reexamination proceeding 
of the existence of the two concurrent proceedings.

I.TIME FOR MAKING DECISION ON 
MERGING OR STAYING THE PROCEEDINGS


A decision whether or not to merge the reissue 
application examination and the ex parte reexamination 
proceeding, or to stay one of the two proceedings, 
will not be made prior to the mailing of an order to 
reexamine the patent pursuant to 37 CFR 1.525. Until 
such time as reexamination is ordered, the examination 
of the reissue application will proceed. A determination 
on the request must not be delayed because 
of the existence of a copending reissue application, 
since 35 U.S.C. 304 and 37 CFR 1.515 require a 
determination within 3 months following the filing 
date of the request. See MPEP § 2241. If the decision 
on the request denies reexamination (MPEP § 2247), 
the examination of the reissue application should be 
continued. If reexamination is ordered (MPEP 
§
 
2246), the Office of the Central Reexamination 
Unit (CRU) or Technology Center Special Program 
Examiner (SPRE) will await the filing of any statement 
under 37 CFR 1.530 and any reply under 
37 
CFR 1.535, or the expiration of the time for same 
(see MPEP § 2249 to § 2251). Thereafter, the Office 
of the SPRE should promptly notify the OPLA 
that the proceedings are ready for consideration of 
merger. If any of the reexamination file, the reissue 
application, and the patent file are paper files, they 
should be hand delivered to the OPLA at the time of 
the  notification to OPLA.

If a reissue application is filed during the pendency 
of a reexamination proceeding, the OPLA should be 
notified  as promptly as possible after the reissue 
application reaches the TC, that the proceedings are 
ready for consideration of merger. If any of the reexamination 
file, the reissue application, and the patent 
file are paper files, they should be hand delivered to 
the OPLA at the time of the  notification to OPLA.

The decision on whether or not the proceedings are 
to be merged, or which proceeding (if any) is to be 
stayed, will generally be made as promptly as possible 
after receipt of the  notification to OPLA and delivery 
of all the paper files to the OPLA. Until a decision 
is mailed merging the proceedings or staying one of 
the proceedings, the two proceedings will continue 
and be conducted simultaneously, but separately.

The Office may in certain situations issue a certificate 
at the termination of a reexamination prosecution, 
even if a copending reissue application or 
another reexamination request has already been filed.

II.CONSIDERATIONS IN DECIDING 
WHETHER TO MERGE THE PROCEEDINGS 
OR WHETHER TO STAY A PROCEEDING


The decision on whether to merge the proceedings 
or stay a proceeding will be made on a case-by-case 
basis based upon the status of the various proceedings. 
Due consideration will be given to the finality of 
the reexamination requested.

A.Reissue About To Issue, Reexamination Requested.


If the reissue patent will issue before the determination 
on the reexamination request must be made, the 
determination on the request should normally be 
delayed until after the granting of the reissue patent; 
and then the determination should be made on the 
basis of the claims in the reissue patent. The reexamination, 
if ordered, would then be on the reissue patent 
claims rather than the original patent claims. Since the 
reissue application would no longer be pending, the 
reexamination would be processed in a normal manner.


Where a reissue patent has been issued, the determination 
on the request for reexamination should specifically 
point out that the determination has been 
made on the claims of the reissue patent and not on 
the claims of the original patent. Any amendment 
made in the reexamination proceeding should treat the 
changes made by the reissue as the text of the patent, 




 

and all bracketing and underlining made with respect 
to the patent as changed by the reissue. Note that the 
reissue claims used as the starting point in the reexamination 
proceeding must be presented in the reexamination 
proceeding as a “clean copy.” Thus, words 
bracketed in the reissue patent claim(s) would not 
appear at all in the reexamination clean copy of the 
claim(s). Also, words that were added via the reissue 
patent will appear in italics in the reissue patent, but 
must appear in plain format in the reexamination 
clean copy of the claim(s).

If a reissue patent issues on the patent under reexamination 
after reexamination is ordered, the next 
action from the examiner in the reexamination should 
point out that further proceedings in the reexamination 
will be based on the claims of the reissue patent 
and not on the patent surrendered.

Where the reissue patent has issued prior to the filing 
of a request for reexamination of the parent patent, 
see MPEP § 2258.

B.Reissue Pending, Reexamination Request 
Filed.

Where a reissue patent will not be granted prior to 
the expiration of the 3-month period for making the 
determination on the reexamination request, a decision 
will be made as to whether the reissue application 
and the reexamination proceeding are to be 
merged, or which of the two (if any) is to be stayed, 
after an order to reexamine has been issued. 

The general policy of the Office is to merge the 
more narrow reexamination proceeding with the 
broader reissue application examination whenever it 
is desirable to do so in the interests of expediting the 
conduct of both proceedings. In making a decision on 
whether or not to merge the reissue application and 
the reexamination proceeding, consideration will be 
given to the status of the reissue application examination 
at the time the order to reexamination the patent 
pursuant to 37 CFR 1.525 is mailed. For example, 
if 
examination of the reissue application has 
not 
begun, or if a rejection by the primary examiner 
has not been appealed to the Board of Patent Appeals 
and Interferences (Board) pursuant to 37 CFR 41.31, 
it is likely that the OPLA will order a merger of the 
reissue application examination and the reexamination 
proceeding. If, however, the reissue application is 
on appeal to the Board or the courts, that fact would 
be considered in making a decision whether to merge 
the reissue application and the reexamination proceeding 
or stay one of them. See In re Stoddard, 213 
USPQ 386 (Comm’r Pat. 1982); and In re Scragg, 215 
USPQ 715 (Comm’r Pat. 1982).

If such a merger of the reissue application and the 
reexamination proceeding is ordered, the order merging 
them will also require that the patent owner place 
the same claims in the reissue application and in the 
reexamination proceeding for purposes of the merged 
proceedings. An amendment may be required to be 
filed to do this within a specified time set in the order 
merging the proceedings.

If the reissue application examination has progressed 
to a point where a merger of the two proceedings 
is not desirable at that time, then the 
reexamination proceeding will generally be stayed 
until the reissue application examination is complete 
on the issues then pending. After completion of the 
examination on the issues then pending in the reissue 
application examination, the stay of the reexamination 
proceeding will be removed and the proceedings will 
be merged if the reissue application is pending, or the 
reexamination proceeding will be conducted separately 
if the reissue application has become abandoned. 
The reissue application examination will be 
reopened, if necessary, for merger of the reexamination 
proceeding therewith.

If a stay of a reexamination proceeding has been 
removed following a reissue application examination, 
the first Office action will set a shortened statutory 
period for response of 1 month unless a longer period 
for response clearly is warranted by the nature of the 
examiner’s action. The second Office action will normally 
be final and also have a 1-month period for 
response. These shortened periods are considered necessary 
to prevent undue delay in concluding the proceedings 
and also to proceed with “special dispatch” 
in view of the earlier stay.

If the reissue application examination and the reexamination 
proceeding are merged, the issuance of the 




 

reissue patent will also serve as the certificate under 
37 CFR 1.570 and the reissue patent will so indicate.

C.Reexamination Proceedings Underway, Reissue 
Application Filed.

When a reissue application is filed after an ex partereexamination request has been filed, the 
OPLA should be notified  as promptly as possible 
after the reissue application reaches the TC. A 
determination will be made as to whether reexamination 
should be ordered. If reexamination is ordered, 
no first Office action will accompany the decision 
ordering reexamination. The order and any of the files 
that are paper files should then be hand delivered to 
the OPLA.

Where reexamination has already been ordered 
prior to the filing of a reissue application, the 
OPLA should be notified as promptly as possible 
after the reissue application reaches the TC, that the 
proceedings are ready for consideration of merger. If 
any of the reexamination file, the reissue application, 
and the patent file are paper files, they should be hand 
delivered to the OPLA at the time of the notification 
to OPLA.

In making a decision on whether or not to merge 
the reissue application examination and the reexamination 
proceeding, consideration will be given as to 
whether issues are raised in the reissue application 
that would not be proper for consideration in reexamination. 
In addition, consideration will also be given to 
the status of the reexamination proceeding. For example, 
if the reexamination proceeding is on appeal to 
the Board or to the Court of Appeals for the Federal 
Circuit, or a Notice of Intent to Issue a Reexamination 
Certificate was issued for the reexamination, that fact 
would be considered in making a decision whether to 
merge the reissue application examination and the 
reexamination proceeding or stay one of them.

III.EXAMINER ASSIGNMENT

With respect to the appropriate examiner assignment 
of the merged reexamination/reissue proceeding, 
see MPEP § 2236.

IV.CONDUCT OF MERGED REISSUE APPLICATION 
AND REEXAMINATION 
PROCEEDING

Where the merger decision indicates that an Office 
action will follow, the merged proceeding is returned 
to the examiner immediately after the decision to 
issue an Office action. Where the merger decision 
indicates that the patent owner is given 1 month to 
provide an amendment to make the claims the same in 
each file (identical amendments to be placed in 
all 
files), the Office of the  SPRE will retain jurisdiction 
over the merged reexamination proceeding to 
await submission of the amendment or the expiration 
of the time to submit the amendment. After the 
amendment is received and processed by the technical 
support staff or the time for submitting the amendment 
expires, the merged proceeding will be returned 
to the examiner to issue an Office action.

Once the proceeding is returned to the examiner for 
issuance of an Office action, the examiner should prepare 
an Office action at the most advanced point possible 
for the first proceeding. Thus, if the first 
proceeding is ready for a final rejection and the second 
proceeding does not provide any new information 
which would call for a new ground of rejection, the 
examiner should issue a final rejection for the merged 
proceeding.

In the event that an amendment to make the claims 
the same in each file is required by the merger decision 
(identical amendments to be placed in all files) 
but is not timely submitted, any claim that does not 
contain identical text in all of the merged proceedings 
should be rejected under 35 U.S.C. 112, paragraph 2, 
as being indefinite as to the content of the claim, and 
thus failing to particularly point out the invention. 

If a reissue application examination and a reexamination 
proceeding are merged, the merged examination 
will be 
conducted on the basis of the rules 
relating to the 
broader reissue application examination. 
Amendments should be 
submitted in accordance 
with the reissue practice under 37 
CFR 1.121(i) and 
37 CFR 1.173; see MPEP § 1453. The examiner, 
in 
examining the merged proceeding, will apply the 
reissue statute, rules, and case law to the merged proceeding. 
This 
is appropriate in view of the fact that 
the statutory provisions for reissue applications and 
reissue application examination include provisions 




 

equivalent to 35 U.S.C. 305 relating to the conduct of 
reexamination proceedings.

In any merged reissue application and reexamination 
proceeding, each Office action issued by the 
examiner will take the form of a single action which 
jointly applies to both the reissue application and the 
reexamination proceeding. Each action will contain 
identifying data for both the reissue application and 
the reexamination proceeding, and each action will be 
physically entered into both files, which will be maintained 
as separate files.

Any response by the applicant/patent owner in such 
a merged proceeding must consist of a single 
response, filed in duplicate for entry in both files (or 
provide multiple copies if there are multiple reexamination 
proceedings being merged with a reissue application), 
and service of copy must be made on any 
third party reexamination requester. A copy of all 
Office actions will be mailed to the third party reexamination 
requester but not to any other third party.

If the applicant/patent owner in such a merged proceeding 
fails to file a timely and appropriate response 
to any Office action, the merged proceeding will be 
terminated. The reissue application will be held abandoned. 
A NIRC will be issued (see MPEP § 2287), 
and the Director will proceed to issue a reexamination 
certificate under 37 
CFR 1.570 in accordance with the 
last action of the Office, unless further action is 
clearly needed in view of the difference in rules relating 
to reexamination and reissue proceedings.

If the applicant/patent owner in a merged proceeding 
files an express abandonment of the reissue application 
pursuant to 37 CFR 1.138, the next Office 
action of the examiner will accept the express abandonment, 
dissolve the merged proceeding, and continue 
the reexamination proceeding. If the applicant/
patent owner files a continued prosecution reissue 
application (a CPA) of a reissue design application 
under 37 CFR 1.53(d), whereby the existing reissue 
design application is considered to be expressly abandoned, 
this will most likely result in the dissolution of 
the merged proceeding, a stay of the CPA reissue 
application, and separate, continued prosecution of 
the reexamination proceeding.

Where the merged proceeding is dissolved based on 
abandonment of the reissue application and the reexamination 
proceeding continues, any grounds of 
rejection which are not applicable under reexamination 
should be withdrawn (e.g., based on public use or 
on sale) and any new grounds of rejection which are 
applicable under reexamination (e.g., improper broadened 
claims) should be made by the examiner. The 
existence of any questions remaining which cannot be 
considered under reexamination following dissolution 
of the merged proceeding would be noted by the 
examiner as not being proper under reexamination 
pursuant to 37 CFR 1.552(c).

Where the merged proceeding is dissolved based 
on 
abandonment of the reissue application and the 
reexamination proceeding continues, there is no guarantee 
that any continuation reissue application will be 
merged with the reexamination proceeding (the continuation 
reissue application might be stayed pending 
conclusion of the reexamination). This policy is necessary 
to prevent the patent owner from filing reissue 
continuation applications to delay a decision by the 
Board on rejected claims.

 If applicant/patent owner files a request for continued 
examination (RCE) of the reissue application 
under 37 CFR 1.114 (which may be filed on or after 
May 29, 2000 for an application filed on or after June 
8, 1995), the reissue application is not considered to 
be expressly abandoned; rather the finality of the 
Office action is withdrawn, and the merged proceeding 
will continue. This is so, because an RCE is not an 
abandonment of any application, whether it be a reissue 
application or a non-reissue application.

V.PETITION TO MERGE REISSUE APPLICATION 
AND REEXAMINATION PROCEEDING 
OR TO STAY EITHER OF THE 
TWO BECAUSE OF THE EXISTENCE OF 
THE OTHER

No petition to merge the reissue application and the 
reexamination proceeding, or stay one of them, 
should be filed before an order directing reexamination 
is issued because the Office will generally, sua 
sponte, make a decision to merge the reissue application 
and the reexamination proceeding or stay one of 
them. If any petition to merge the reissue application 
and the reexamination proceeding, or to stay one of 
them because of the other, is filed prior to the determi





 

nation (37 CFR 1.515) and order to reexamine 
(37 
CFR 1.525), it will not be considered, but will be 
returned to the party submitting the same by the 
CRU or TC Director, regardless of whether the 
petition is filed in the reexamination proceeding, the 
reissue application, or both. This is necessary to prevent 
premature papers relating to the reexamination 
proceeding from being filed. The decision returning 
such a premature petition will be made of record in 
both the reexamination file and the reissue application 
file, but no copy of the petition will be retained by the 
Office. See MPEP § 2267.

The patent owner may file a petition under 37 CFR 
1.182 to merge the reissue application and the reexamination 
proceeding, or stay one of them because of 
the other, at the time the patent owner’s statement 
under 37 CFR 1.530 is filed or subsequent thereto in 
the event the Office has not acted prior to that date to 
merge or stay. If the requester of the reexamination is 
not the patent owner, that party may petition to merge 
the reissue application and the reexamination proceeding, 
or stay one of them because of the other, as a 
part of a reply pursuant to 37 CFR 1.535, in the event 
the Office has not acted prior to that date to merge or 
stay. A petition to merge the reissue application and 
the reexamination proceeding, or stay one of them 
because of the other, which is filed by a party other 
than the patent owner or the requester of the reexamination 
will not be considered, but will be returned to 
that party by the CRU or TC Director as being 
improper under 37 
CFR 1.550(g).

All decisions on the merits of petitions to merge the 
reissue application examination and the reexamination 
proceeding, or to stay one of them because of the 
other, will be made in the OPLA. Such petitions to 
merge the reissue application and the reexamination 
proceeding, or stay one of them because of the other, 
which are filed by the patent owner or the requester 
after the order for reexamination will be referred to 
the OPLA for decision.

VI.FEES IN MERGED PROCEEDINGS

Where the proceedings have been merged and a 
paper is filed which requires payment of a fee (e.g., 
excess claim fee, extension of time fee, petition fee, 
appeal fee, brief fee, oral hearing fee), only a single 
fee need be paid. For example, only one fee need be 
paid for an appeal brief even though the brief relates 
to merged multiple proceedings and copies must be 
filed for each file in the merged proceeding. As to 
excess claim fees, reissue practice will control.

==2286 Ex Parte Reeexamination and Litigation Proceedings==

37 CFR 1.565. Concurrent office proceedings which 
include an ex parte reexamination proceeding.



(b)If a patent in the process of ex parte reexamination is or 
becomes involved in litigation, the Director shall determine 
whether or not to suspend the reexamination. See § 1.987 for inter 
partes reexamination proceedings.



35 U.S.C. 302 permits a request for ex parte reexamination 
to be filed “at any time.” Requests for ex 
parte reexamination are frequently filed where the 
patent for which reexamination is requested is 
involved in concurrent litigation. The guidelines set 
forth below will generally govern Office handling of 
ex parte reexamination requests where there is concurrent 
litigation in the Federal courts.

I.COURT-SANCTIONED REEXAMINATION 
PROCEEDING, LITIGATION 
STAYED FOR REEXAMINATION, OR 
EXTENDED PENDENCY OF REEXAMINATION 
PROCEEDING CONCURRENT 
WITH LITIGATION

Any request for ex parte reexamination which indicates 
(A)
 
that it is filed as a result of an agreement by 
parties to litigation which agreement is sanctioned by 
a court, or (B) that litigation is stayed for the filing of 
a reexamination request will be taken up by the examiner 
for decision 6 weeks after the request was filed. 
See MPEP § 2241. If reexamination is ordered, the 
examination following the statement by the patent 
owner under 37 CFR 1.530 and the reply by the 
requester under 37 CFR 1.535 will be expedited to 
the 
extent possible. Office actions in these reexamination 
proceedings will normally set a 1-month shortened 
statutory period for response rather than the 
2 
 
months usually set in reexamination proceedings. 
See MPEP § 2263. This 1-month period may be 
extended only upon a showing of sufficient cause. See 
MPEP §
 
2265. See generally In re Vamco Machine 
and Tool, Inc., 752 F.2d 1564, 224 USPQ 617 (Fed. 




 

Cir. 1985); Gould v. Control Laser Corp., 705 F.2d 
1340, 217 USPQ 985 (Fed. Cir. 1983); Loffland Bros. 
Co. v. Mid-Western Energy Corp., 225 USPQ 886 
(W.D. Okla. 1985); The Toro Co. v. L.R. Nelson 
Corp., 223 USPQ 636 (C.D. Ill. 1984); Digital Magnetic 
Systems, Inc. v. Ansley, 213 
USPQ 290 (W.D. 
Okla. 1982); Raytek, Inc. v. Solfan Systems Inc., 211 
USPQ 405 (N.D. Cal. 1981); and Dresser Industries, 
Inc. v. Ford Motor Co., 211 USPQ 1114 (N.D. Texas 
1981).

In addition, if (A) there is litigation concurrent 
with an ex parte reexamination proceeding and (B) 
the reexamination proceeding has been pending for 
more than one year, the Director or Deputy Director 
of the Office of Patent Legal Administration (OPLA), 
Director of the Central Reexamination Unit (CRU), 
Director of the Technology Center (TC) in which the 
reexamination is being conducted, or a Senior Legal 
Advisor of the OPLA, may approve Office actions in 
such reexamination proceeding setting a one-month or 
thirty days, whichever is longer, shortened statutory 
period for response rather than the two months usually 
set in reexamination proceedings. A statement at 
the end of the Office action – “One month or thirty 
days, whichever is longer, shortened statutory period 
approved,” followed by the signature of one of these 
officials, will designate such approval. It is to be 
noted that the statutory requirement for “special dispatch” 
in reexamination often becomes important, and 
sometimes critical, in coordinating the concurrent litigation 
and reexamination proceedings.

II.FEDERAL COURT DECISION KNOWN 
TO EXAMINER AT THE TIME THE DETERMINATION 
ON THE REQUEST FOR 
REEXAMINATION IS MADE

If a Federal Court decision on the merits of a patent 
is known to the examiner at the time the determination 
on the request for ex parte reexamination is 
made, the following guidelines will be followed by 
the examiner, whether or not the person who filed the 
request was a party to the litigation. When the initial 
question as to whether the prior art raises a substantial 
new question of patentability as to a patent claim is 
under consideration, the existence of a final court 
decision of claim validity in view of the same or different 
prior art does not necessarily mean that no new 
question is present. This is true because of the different 
standards of proof and claim interpretation 
employed by the District Courts and the Office. See 
for example In re Zletz, 893 F.2d 319, 322, 
13 
USPQ2d 1320, 1322 (Fed. Cir. 1989) (manner of 
claim interpretation that is used by courts in litigation 
is not the manner of claim interpretation that is applicable 
during prosecution of a pending application 
before the PTO) and In re Etter, 756 F.2d 852, 
225 
USPQ 1 (Fed. Cir. 1985) (the 35 U.S.C. 282 presumption 
of patent validity has no application in reexamination 
proceedings). Thus, while the Office may 
accord deference to factual findings made by the 
court, the determination of whether a substantial new 
question of patentability exists will be made independently 
of the court’s decision on validity as it is not 
controlling on the Office. A non-final holding of 
claim invalidity or unenforceability will not be controlling 
on the question of whether a substantial new 
question of patentability is present. A final holding of 
claim invalidity or unenforceability (after all appeals), 
however, is controlling on the Office. In such cases, a 
substantial new question of patentability would not be 
present as to the claims held invalid or unenforceable. 
See Ethicon v. Quigg, 849 F.2d 1422, 7 
USPQ2d 1152 
(Fed. Cir. 1988).

Any determination on a request for reexamination 
which the examiner makes after a Federal Court decision 
must be reviewed by the Central Reexamination 
Unit (CRU) or Technology Center (TC) Special Program 
Examiner (SPRE) to ensure that it conforms to 
the current Office litigation policy and guidelines. See 
MPEP §
 
2240. 

For a discussion of the policy in specific situations 
where a Federal Court decision has been issued, see 
MPEP § 2242.

III.REEXAMINATION WITH CONCURRENT 
LITIGATION BUT ORDERED PRIOR 
TO FEDERAL COURT DECISION 

In view of the statutory mandate to make the determination 
on the request within 3 months, the determination 
on the request based on the record before the 
examiner will be made without awaiting a decision by 
the Federal Court. It is not realistic to attempt to determine 
what issues will be treated by the Federal Court 
prior to the court decision. Accordingly, the determination 
on the request will be made without considering 
the issues allegedly before the court. If an ex parte




 

reexamination is ordered, the reexamination will continue 
until the Office becomes aware that a court decision 
has issued. At such time, the request will be 
reviewed in accordance with the guidelines set forth 
below. The patent owner is required by 37 CFR 
1.565(a) to call the attention of the Office to any prior 
or concurrent proceeding in which the patent is 
involved or was involved. Thus, the patent owner has 
an obligation to promptly notify the Office that a decision 
has been issued in the Federal Court.

IV.FEDERAL COURT DECISION ISSUES 
AFTER EX PARTE REEXAMINATION 
ORDERED

Pursuant to 37 CFR 1.565(a), the patent owner in 
an ex parte reexamination proceeding must promptly 
notify the Office of any Federal court decision involving 
the patent. Where the reexamination proceeding is 
currently pending and the court decision issues, or 
the 
Office becomes aware of a court decision relating 
to a pending reexamination proceeding, the order to 
reexamine is reviewed to see if a substantial new 
question of patentability is still present. If no substantial 
new question of patentability is still present, the 
order to reexamine is vacated by the CRU or TC 
Director and reexamination is concluded.

A non-final Federal Court decision concerning a 
patent under reexamination shall have no binding 
effect on a reexamination proceeding.

The issuance of a final Federal Court decision 
upholding validity during an ex parte reexamination 
also will have no binding effect on the examination of 
the reexamination. This is because the court states in 
Ethicon v. Quigg, 849 F.2d 1422, 1428, 7 USPQ2d 
1152, 1157 (Fed. Cir. 1988) that the Office is notbound by a court’s holding of patent validity and 
should continue the reexamination. The court notes 
that district courts and the Office use different standards 
of proof in determining invalidity, and thus, on 
the same evidence, could quite correctly come to different 
conclusions. Specifically, invalidity in a district 
court must be shown by “clear and convincing” evidence, 
whereas in the Office, it is sufficient to show 
nonpatentability by a “preponderance of evidence.” 
Since the “clear and convincing” standard is harder to 
satisfy than the “preponderance” standard, deference 
will ordinarily be accorded to the factual findings of 
the court where the evidence before the Office and the 
court is the same. If sufficient reasons are present, 
claims held valid by the court may be rejected in reexamination.


On the other hand, a final Federal Court holding of 
invalidity or unenforceability (after all appeals), is 
binding on the Office. Upon the issuance of a final 
holding of invalidity or unenforceability, the claims 
being examined which are held invalid or unenforceable 
will be withdrawn from consideration in the 
reexamination. The reexamination will continue as to 
any remaining claims being examined. Thus, the 
reexamination will continue if any original, new, or 
amended claim being examined that was not found 
invalid or unenforceable by the Court. If all of the 
claims being examined in the reexamination proceeding 
are finally held invalid or unenforceable, the 
reexamination will be vacated by the CRU or TC 
Director as no longer containing a substantial new 
question of patentability and the reexamination will 
be concluded. If not all claims being examined
were held invalid (or unenforceable), a substantial 
new question of patentability may still exist as to the 
remaining claims. In such a situation, the remaining 
claims would be examined; and, as to the claims held 
invalid/unenforceable, form paragraph 22.20 should 
be used at the beginning of the Office action.

V.LITIGATION REVIEW AND  SPRE 
APPROVAL

In order to ensure that the Office is aware of prior 
or concurrent litigation, the examiner is responsible 
for conducting a reasonable investigation for evidence 
as to whether the patent for which ex parte reexamination 
is requested has been or is involved in litigation. 
The investigation will include a review of the 




 

reexamination file, the patent file, and the results of 
the litigation computer search by the STIC.

If the examiner discovers, at any time during the 
reexamination proceeding, that there is litigation or 
that there has been a federal court decision on the 
patent, the fact will be brought to the attention of the 
CRU or TC SPRE prior to any further action by the 
examiner. The CRU or TC SPRE must review any 
action taken by the examiner in such circumstances to 
ensure current Office litigation policy is being followed.


VI.FEDERAL COURT DECISION CONTROLLING 
IN REEXAMINATION PROCEEDING


Once a federal court has ruled upon the merits of a 
patent and an ex parte reexamination is still appropriate 
under the guidelines set forth above, the federal 
court decision will be considered controlling and will 
be followed as to claims finally held to be invalid by 
the court. 

==2287 Conclusion of Ex Parte Reexamination Proceeding==

Upon conclusion of the ex parte reexamination proceeding, 
the examiner must prepare a “Notice of 
Intent to Issue Ex Parte Reexamination Certificate” 
(NIRC) by completing form PTOL-469. If appropriate, 
an examiner’s amendment will also be prepared. 
Where claims are found patentable, reasons must be 
given for each claim found patentable. See 
the discussion 
as to preparation of an examiner’s amendment 
and reasons for allowance at the end of this section. In 
addition, the 
examiner must prepare the reexamination 
file so 
that the Office of Publications can prepare 
and 
issue a certificate in accordance with 35 
U.S.C. 
307 and 37 CFR 1.570 setting forth the results of the 
reexamination proceeding and the content of the 
patent following the proceeding. See MPEP § 2288.

If it is the intent of the examiner to find any 
claim(s) patentable (confirmed or allowed) in concluding 
the reexamination proceeding, the examiner 
will so inform his/her Special Program Examiner 
(SPRE). The SPRE will convene a panel
review conference (see MPEP § 2271.01), and the 
conference members will review the patentability of 
the claim(s). If the conference confirms the patentability 
of the claim(s), a NIRC shall be issued and 
signed by the examiner, with the two other conferees 
initialing the NIRC (as “conferee”) to indicate their 
participation in the conference. Both conferees will 
initial, even though one of them may have dissented 
from the 3-party conference decision on the patentability 
of the claim(s). If the conference does not confirm 
the patentability of the claim(s),  the examiner 
will reevaluate and issue an appropriate Office 
action rejecting the claim(s), not confirmed as patentable.


A panel review conference is not to be held as 
to any claim that was in the case (proceeding) at the 
time the case was reviewed by the Board of Patent 
Appeals and Interferences (Board) or a federal court. 
The following example will serve to illustrate this 
point. In a reexamination proceeding, claims 5-10 are 
allowed by the examiner, and claims 1-4 are rejected. 
The rejection of claims 1-4 is then appealed to the 
Board. The Board reverses the rejection of claims 1-4 
and imposes a new ground of rejection of claims 1-4 
under 37 CFR 41.50(b). The patent owner then elects 
further prosecution before the examiner pursuant to 
37 CFR 41.50(b)(1) and submits an amended set of 
claims 1-4. The examiner finds amended claims 1-4 to 
be allowable and wishes to “allow” the entire case by 
issuing a NIRC. A panel review conference must 
be held at this stage of the proceeding. The conferees 
will review the allowance of amended claims 1-4. The 
conferees will not, however, review the allowance of 
claims 5-10, because claims 5-10 were in the case, 
and before the Board at the time the Board decided 
the appeal.

A panel review conference is not to be held 
where the proceeding is to be concluded by the cancellation 
of all claims. No panel review conference 
is needed in this instance, as the issuance of the NIRC 
is essentially ministerial.

Thus, a panel review conference must be held 
in each instance where a NIRC is about to be issued, 
unless the NIRC is being issued: (A) following and 
consistent with a decision by the Board of Patent 
Appeals and Interferences (or court) on the merits of 
the proceeding; or (B) as a consequence of the patent 
owner’s failure to respond or take other action where 
such a response or action is necessary to maintain 
pendency of the proceeding and, as a result of which 
failure to respond, all of the claims will be canceled. 




 

A NIRC informs the patent owner and any third 
party requester that the reexamination prosecution has 
been terminated. The rules do not provide for an 
amendment to be filed in a reexamination proceeding 
after prosecution has been terminated. The provisions 
of 37 CFR 1.312 do not apply in reexamination. Any 
amendment, information disclosure statement, or 
other paper related to the merits of the reexamination 
proceeding filed after prosecution has been terminated 
must be accompanied by a petition under 37 CFR 
1.182 to have the amendment considered.

Normally the title of the invention will not need to 
be changed during reexamination. If a change of the 
title is necessary, the patent owner should be notified 
of the need to provide an amendment changing the 
title as early as possible in the prosecution as a part of 
an Office action. If all of the claims are found to be 
patentable and a NIRC has been or is to be mailed, the 
examiner may change to the title of the invention 
only by an examiner’s amendment. Changing the title 
and merely initialing the change is not permitted in 
reexamination.

An examiner’s amendment can be made to change 
the abstract, where the patent owner’s narrowing 
amendments during the prosecution of the reexamination 
have changed the focus of the invention. An 
example of this would be where a claim is made more 
specific during reexamination, and the abstract does 
not at all focus on the specific limitation that is now 
required for all the patent claims.

If all of the claims are disclaimed in a patent under 
reexamination, a certificate under 37 CFR 1.570 will 
be issued indicating that fact.

I.PREPARATION OF THE CASE FOR PUBLICATION


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

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

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


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

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

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

(A)The broadest claim should be selected;

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

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

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

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




 

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

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

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

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

The examiner must also complete a checklist, form 
PTO-1516, for the reexamination file which will be 
forwarded to the Office of Publications identifying 
information used in printing the reexamination certificate. 
A copy of this form may be obtained from the 
Office of the CRU or TC Special Program 
Examiner (SPRE).

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

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

(A)the title;

(B)the inventor;

(C)the assignee;

(D)the continuing data;

(E)the foreign priority;

(F)the address of the owner’s attorney; and

(G)the requester’s address 

have been properly entered in the reexamination and 
patent files (in the file history of an IFW file and on 
the face of a paper file) and properly entered in the 
PALM data base. After the clerk has finished his/her 
processing, he or she will forward the reexamination 
proceeding to the  SPRE for review. After approval 
by the  SPRE, the reexamination clerk will mail the 
NIRC with attachments and forward the reexamination 
proceeding to the OPLA (see MPEP § 2289), 
which will ultimately forward same to the Office of 
Publications for printing.

II.REEXAMINATION PROCEEDINGS IN 
WHICH ALL THE CLAIMS ARE CANCELED


There will be instances where all claims in the reexamination 
proceeding are to be canceled, and a NIRC 
will be issued indicating that fact. This would occur 
where the patent owner fails to timely respond to an 
Office action, and all live claims in the reexamination 
proceeding are under rejection. It would also occur 
where all live claims in the reexamination proceeding 
are to be canceled as a result of a Board decision 
affirming the examiner, and the time for appeal to the 
court and for requesting reconsideration or modification 
has expired.

Prior to canceling the claims and issuing the NIRC, 
the examiner should telephone the patent owner to 
inquire if a timely response, timely appeal, etc., was 
filed with the Office so as to make certain that a 
timely response has not been misdirected within the 
Office. Where the patent owner indicates that no such 
filing was made, or where the patent owner cannot be 
reached, the examiner will proceed to issue a NIRC 
terminating prosecution.

A panel review conference is not to be held, 
because the proceeding is to be concluded by the cancellation 
of all claims. Rather, the examiner will issue 
a NIRC action, and as an attachment to the NIRC, the 
examiner will draft an examiner’s amendment canceling 
all live claims in the reexamination proceeding. In 
the examiner’s amendment, the examiner should point 
out why the claims have been canceled. For example, 
the examiner might make one of the two following 
statements, as appropriate:

“Claims 1-5 and 6-8 (all live claims in the proceeding) 
were subject to rejection in the last Office action mailed 9/
9/99. Patent owner failed to timely respond to that Office 




 

action. Accordingly claims 1-5 and 6-8 have been canceled. 
See 37 CFR 1.550(d) and MPEP § 2266.”

 

“The rejection of claims 1-5 and 6-8 (all live claims in 
the proceeding) has been affirmed in the Board decision 
of 9/9/99, and no timely appeal to the court has been filed. 
Accordingly claims 1-5 and 6-8 have been canceled.”

If the patent owner was reached by telephone and 
indicated that there was no timely filing (as discussed 
above), the attachment to the NIRC will make the 
telephone interview of record.

In order to physically cancel the live claims in the 
file history, brackets should be placed around all the 
live claims on a copy of the claims printed from the 
file history, and the copy then scanned into the IFW 
file history. All other claims in the proceeding should 
have previously been either replaced or canceled.

The examiner will designate a cancelled original 
patent claim, to be printed in the Official Gazette, on 
the Issue Classification IFW form in the appropriate 
place for the claim chosen.

III.HANDLING OF MULTIPLE DEPENDENT 
CLAIMS

The following discussion provides guidance on 
how to treat multiple dependent claims when preparing 
a reexamination proceeding for publication of the 
reexamination certificate.

Assume Patent X issues with the following claims:

Patent claims:

1.A method of sintering a particulate ceramic 
preform, comprising heating it above 500 degrees F, 
cooling it to 100 degrees F, and repeating the heating 
and cooling steps six times. 

2.The method of claim 1, where a pressure of 
300 - 400 psi is applied during the heating steps.

3.The method of claim 1 or claim 2, where the 
pressure applied during the heating steps is 350 - 375 
psi.

4.The method of claim 3, where the pressure 
applied during the heating steps is 360 - 365 psi.

5.The method of claim 1, where the preform 
contains lithium and magnesium oxides.

6.The method of claim 5, where the preform 
contains sodium fluoride.

7.The method of claim 1 or claim 5, where the 
sintered preform is machined into a lens.

A reexamination request is then filed for Patent X, 
and at the point when the claims are ready for issuance 
of the certificate, the following claims are 
present in the reexamination file.

In reexamination:

1.(Text Unchanged) A method of sintering a 
particulate ceramic preform, comprising heating it 
above 500 degrees F, cooling it to 100 degrees F, and 
repeating the heating and cooling steps six times.

2.(Amended) The method of claim 1 or claim8, where the sintered preform is machined into a lens.

3.(Amended) The method of [claim 1 or] claim 
2, where the pressure applied during the heating steps 
is 350 - 375 psi.

4.(Amended) The method of claim 3 or claim8, where the pressure applied during the heating steps 
is 355 [360] - 365 psi.

5.(Text Unchanged) The method of claim 1, 
where the preform contains lithium and magnesium 
oxides.

6.(Amended) The method of claim 8[5], where 
the preform contains sodium fluoride.

7.(Text Unchanged) The method of claim 1 or 
claim 5, where the sintered preform is machined into 
a lens.

8.(New) A method of sintering a particulate fluoride 
ceramic preform comprising heating it above 
500 degrees F, cooling it to 100 degrees F, and repeating 
the heating and cooling steps six times.

The status of the claims would be set forth as follows:


Part 1(h) of the Notice of Intent to Issue Ex ParteReexamination Certificate Form PTOL-469 (NIRC) 
would be completed as follows.

Patent claims confirmed: 1, 2/1, 5, 7 

Patent claims amended: 3, 4/3, 

Patent claims canceled: 3/1, 6/5

New claims patentable: 2/8, 4/8, 6/8, 8

The parts of the Examiner’s checklist (Form PTO-
1516) directed to the status of the claims would be 
completed as follows.

7. Patent claims confirmed: 1, 5, 7

11. Patent claims canceled: None




 

12. Patent claims amended: 2, 3, 4 and 6

13. Patent claims dependent on amended: None

14. New claims patentable: 8

Looking at claim 2:

For the purpose of the NIRC, the addition of a 
claim of the multiple dependency is viewed as adding 
a new claim for which protection is now to be provided. 
Thus, prior to reexamination, only the subject 
matter of claim 2/1 was protected. As a result of reexamination, 
claim 2/8 has been added, and its subject 
matter is now protected. Thus, claim 2/8 is designated 
as a new claim. Claim 2/1 has not changed as to its 
content and its scope of protection, and is designated 
as a confirmed claim.

For the purpose of the Examiner’s checklist, the 
addition or deletion of a claim of the multiple dependency 
is viewed simply as amending the claim, 
because of the way claims are printed on the certificate. 
Thus, claim 2 is designated as an amended claim 
and is simply printed on the certificate in its amended 
form as:

2. The method of claim 1 or claim 8, where the sintered 
preform is machined into a lens.

Looking at claim 3:

For the purpose of the NIRC, the deletion of a 
claim of the multiple dependency is viewed as canceling 
the claim deleted, and protection is no longer provided 
for the claim as dependent from the deleted 
claim. Thus, prior to reexamination, the subject matter 
of claims 3/1 and 3/2 was protected. As a result of 
reexamination, claim 3/1 has been deleted, and its 
subject matter is no longer protected. Thus, claim 3/1 
is designated as a canceled claim. Claim 3/2 has not 
changed as to its content and its scope of protection, 
and is designated as a confirmed claim.

For the purpose of the Examiner’s checklist, the 
addition or deletion of a claim of the multiple dependency 
is viewed simply as amending the claim, 
because of the way claims are printed on the certificate. 
Thus, claim 3 is designated as an amended claim 
and is simply printed on the certificate in its amended 
form as:

3. The method of [claim 1 or] claim 2, where the 
pressure applied during the heating steps is 350 - 375 
psi.

Looking at claim 4:

For the purpose of the NIRC, the addition of a 
claim of the multiple dependency is viewed as adding 
a new claim for which protection is now to be provided. 
Thus, prior to reexamination, only the subject 
matter of claim 4/3 was protected. As a result of reexamination, 
claim 4/8 has been added, and its subject 
matter is now protected. Thus, claim 4/8 is designated 
as a new claim. Claim 4/3 has changed as to its content 
and its scope of protection due to the expanding 
of the pressure range from 360 - 365 psi to 355 - 365 
psi, and claim 4/3 is designated as an amended claim.

For the purpose of the Examiner’s checklist, 
the 
addition or deletion of a claim of the multiple 
dependency is viewed simply as amending the 
claim,
 
because of the way claims are printed on the 
certificate. Thus, claim 4 is designated as an amended 
claim and simply printed on the certificate in its 
amended form as:

4. (Amended) The method of claim 3 or claim 8, 
where the pressure applied during the heating steps is 
355 [360] - 365 psi.

Looking at claim 6:

For the purpose of the NIRC, prior to reexamination, 
the subject matter of claim 6/5 was protected and 
claim 6/8 did not exist. As a result of reexamination, 
claim 6/5 has been deleted and claim 6/8 has been 
added. Thus, claim 6/5 is designated as a canceled 
claim, and claim 6/8 is designated as a new claim.

For the Examiner’s checklist, claim 6 is designated 
as an amended claim and is simply printed on the certificate 
in its amended form as:

6. (Amended) The method of claim 8 [5], where 
the preform contains sodium fluoride.

Looking at claim 7:

It is unchanged as to its text. Claim 7 remains 
dependent on claim 1 or claim 5, as it did prior to 
reexamination. Thus, both claims 7/1 and 7/5 are confirmed. 
Claims 7/1 and 7/5 are listed in the “Con





 

firmed” part of the NIRC. They are not listed 
separately, but rather simply as “7.” This is because 
the entirety of claim 7 has been confirmed.

As to the Examiner’s checklist, claim 7, being 
unchanged as to its text and not being dependent on 
an amended claim, is simply listed in the “Confirmed” 
part of the checklist. Claim 7 will not be printed on 
the certificate, but will simply be listed as one of the 
confirmed claims.

IV.REEXAMINATION REMINDERS

The following items deserve special attention. The 
examiner should ensure they have been correctly 
completed or followed before forwarding the case to 
the Legal Instrument Examiner (LIE).

(A)All patent claims for which a substantial 
new question of patentability has been found must 
have been examined. See MPEP §
 
2243.

(B)No renumbering of patent claims is permitted. 
New claims may require renumbering. See MPEP 
§
 
2250.

(C)All amendments to the description and claims 
must conform to requirements of 37 CFR 1.530(d)-(j). 
This includes any changes made by Examiner’s 
Amendment. If a portion of the text is amended more 
than once, each amendment should indicate all of the 
changes (insertions and deletions) in relation to the 
current text in the patent under reexamination. See 
MPEP § 2250.

(D)The prior art must be listed on a form PTO 
892,  PTO/SB/08A or 08B, or PTO/SB/42 (or on a 
form having a format equivalent to one of these 
forms). These forms must be properly completed. See 
MPEP § 2257.

(E)The examiner and reexamination clerk checklists 
PTO-1516 and PTO-1517 must be entirely and 
properly completed. A careful reading of the instructions 
contained in these checklists is essential. The 
clerical checklist is designed as a check and review of 
the examiner’s responses on the examiner checklist. 
Accordingly, the reexamination clerk should personally 
review the file before completing an item. The 
reexamination clerk should check to make certain that 
the responses to all related items on both checklists 
are in agreement.

(F)Multiple pending reexamination proceedings 
are often merged. See MPEP § 2283.

(G)Where the reexamination proceeding is 
copending with an application for reissue of the patent 
being reexamined, the files must have been forwarded 
to the Office of Patent Legal Administration (OPLA) 
for a consideration of potential merger, with a decision 
(by a Senior Legal Advisor or Special Projects 
Examiner) on the question being present in the reexamination 
file. See MPEP § 2285.

(H)Reasons for patentability and/or confirmation 
are required for each claim found patentable. See 
below.

(I)There is no issue fee in reexamination. See 
MPEP § 2233.

(J)The patent claims may not be amended nor 
new claims added after expiration of the patent. See 
MPEP § 2250.

(K)Original drawings cannot be physically 
changed. All drawing amendments must be presented 
on new sheets. The examiner may have the draftsperson 
review the new sheets of drawings if the examiner 
would like the draftsperson’s assistance in identifying 
errors in the drawings. A draftsperson’s “stamp” to 
indicate approval is no longer required on patent 
drawings, and these stamps are no longer to be used 
by draftspersons. See MPEP § 2250.01.

(L)An amended or new claim may not enlarge 
the scope of the patent claims. See MPEP § 2250.

(M)If the patent has expired, all amendments to 
the patent claims and all claims added during the proceeding 
must be withdrawn. Further, all presently 
rejected and objected-to claims are canceled by examiner’s 
amendment. See MPEP § 2250, subsection
III, Amendment after the Patent Has Expired.

V.EXAMINER’S AMENDMENT

Where it is necessary to amend the patent in order 
to place the proceeding in condition to issuance of a 
reexamination certificate, the examiner may request 
that the patent owner provide the amendment(s), or 
the examiner may make the amendments, with the 
patent owner’s approval, by a formal examiner’s 
amendment. If the changes are made by an examiner’s 
amendment, the examiner’s amendment must comply 
with the requirements of 37 CFR 1.530(d)-(j) in 
amending the patent. Thus, the examiner’s amendment 
requires presentation of the full text of any paragraph 
or claim to be changed, with the 37 CFR 
1.530(f) markings. The exception for examiner’s 




 

amendments set forth in 37 CFR 1.121(g) does notapply to examiner’s amendments in reexamination 
proceedings. See MPEP § 2250. The only exceptionto the full text presentation requirement is that an 
entire claim or an entire paragraph of specification 
may be deleted from the patent by a statement deleting 
the claim or paragraph without the presentation of 
the text of the claim or paragraph.

VI.REASONS FOR PATENTABILITY AND/
OR CONFIRMATION

Reasons for patentability must be provided, unless 
all claims are canceled in the proceeding. Box 2 of 
form PTOL-469 is checked, and the reasons are provided 
as an attachment. In the attachment to the 
NIRC, the examiner should indicate why the claims 
found patentable in the reexamination proceeding are 
clearly patentable over the cited patents or printed 
publications. This is done in a manner similar to that 
used to indicate reasons for allowance in an application. 
See MPEP § 1302.14. Where the record is clear 
as to why a claim is patentable, the examiner may 
refer to the particular portions of the record which 
clearly establish the patentability of that claim.

The reasons for patentability may be set forth on 
form PTOL-476, entitled “REASONS FOR PATENTABILITY 
AND/OR CONFIRMATION.” However, 
as a preferred alternative to using form PTOL-476, the 
examiner may instead use form paragraph 22.16.

Original patent claims that are found patentable in a 
reexamination proceeding are generally to be designated 
as “confirmed” claims, while new claims and 
amended patent claims are generally to be designated 
as “patentable” claims. However, for purposes of the 
examiner setting forth reasons for patentability or 
confirmation, the examiner may use “patentable” to 
refer to any claim that defines over the cited patents or 
printed publications. There is no need to separate the 
claims into “confirmed” and “patentable” categories 
when setting forth the reasons.

Obviously, where all claims are canceled in the proceeding, 
no reasons for patentability are provided. 

Any “Comments on Statement of Reasons for Patentability 
and/or Confirmation” which are received 
will be placed in the reexamination file, without comment. 
This will be done even where the reexamination 
certificate has already issued.

==2288 Issuance of Ex Parte Reexamination Certificate==

35 U.S.C. 307. Certificate of patentability, unpatentability, 
and claim cancellation.

(a)In a reexamination proceeding under this chapter, when 
the time for appeal has expired or any appeal proceeding has terminated, 
the Director will issue and publish a certificate canceling 
any claim of the patent finally determined to be unpatentable, confirming 
any claim of the patent determined to be patentable, and 
incorporating in the patent any proposed amended or new claim 
determined to be patentable.



37 CFR 1.570. Issuance of ex parte reexamination 
certificate after ex parte reexamination proceedings.

(a)Upon the conclusion of ex parte reexamination proceedings, 
the Director will issue an ex parte reexamination certificate 
in accordance with 35 
U.S.C. 307 setting forth the results of the ex 
parte reexamination proceeding and the content of the patent following 
the ex parte reexamination proceeding.

(b)An ex parte reexamination certificate will be issued in 
each patent in which an ex parte reexamination proceeding has 
been ordered under § 1.525 and has not been merged with any 
inter partes reexamination proceeding pursuant to § 1.989(a). Any 




 

statutory disclaimer filed by the patent owner will be made part of 
the ex parte reexamination certificate.

(c)The ex parte reexamination certificate will be mailed on 
the day of its date to the patent owner at the address as provided 
for in § 1.33(c). A copy of the ex parte reexamination certificate 
will also be mailed to the requester of the ex parte reexamination 
proceeding.

(d)If an ex parte reexamination certificate has been issued 
which cancels all of the claims of the patent, no further Office proceedings 
will be conducted with that patent or any reissue applications 
or any reexamination requests relating thereto.

(e)If the ex parte reexamination proceeding is terminated by 
the grant of a reissued patent as provided in § 1.565(d), the reissued 
patent will constitute the ex parte reexamination certificate 
required by this section and 35 U.S.C. 307.

(f)A notice of the issuance of each ex parte reexamination 
certificate under this section will be published in the Official 
Gazette on its date of issuance.

Since abandonment is not possible in a reexamination 
proceeding, a reexamination certificate will be 
issued at the conclusion of the proceeding in each 
patent in which a reexamination proceeding has been 
ordered under 37 CFR 1.525 except where the reexamination 
has been concluded by vacating the 
reexamination proceeding or by the grant of a reissue 
patent on the same patent in which case the reissue 
patent also serves as the reexamination certificate.

Where the reexamination is to be concluded for 
a failure to timely respond to an Office action, see 
MPEP §
 
2266.

The reexamination certificate will set forth the 
results of the proceeding and the content of the patent 
following the reexamination proceeding. The certificate 
will:

(A)cancel any patent claims determined to be 
unpatentable;

(B)confirm any patent claims determined to be 
patentable;

(C)incorporate into the patent any amended or 
new claims determined to be patentable;

(D)make any changes in the description approved 
during reexamination;

(E)include any statutory disclaimer or terminal 
disclaimer filed by the patent owner;

(F)identify unamended claims which were held 
invalid on final holding by another forum on any 
grounds;

(G)identify any patent claims not reexamined;

(H)be mailed on the day it is dated to the patent 
owner at the address provided for in 37 CFR 1.33(c)
and a copy will be mailed to the third party requester; 
and

(I)identify patent claims, dependent on amended 
claims, determined to be patentable.

If a certificate issues which cancels all of the claims 
of the patent, no further Office proceedings will be 
conducted with regard to that patent or any reissue 
application or reexamination request directed thereto. 
See 37 CFR 1.570(d).

If a reexamination proceeding is concluded by 
the grant of a reissued patent as provided for in 37 
CFR 1.565(b), the reissued patent will constitute the 
reexamination certificate required by 35 U.S.C. 307and this section. See 37 CFR 1.570(e).

A notice of the issuance of each reexamination certificate 
will be published in the Official Gazette on its 
date of issuance in a format similar to that used for 
reissue patents. See 37 CFR 1.570(f) and MPEP 
§
 
2291.

==2289 Reexamination Review==

All reexamination cases are monitored and 
reviewed in the Central Reexamination Unit (CRU) 
or Technology Center (TC) by the Office of the 
Special Program Examiners (SPRE) (includes SPRE, 
paralegal or other technical support who might be 
assigned as backup) at several stages during the prosecution. 
This is done to ensure that practice and procedure 
unique to reexamination has been carried out 
for the reexamination proceeding. In addition to the 
SPRE review of the reexamination cases, a a 
panel review is made prior to issuing Office actions as 
set forth in MPEP § 2271.01.

After a Notice of Intent to Issue Ex Parte Reexamination 
Certification (NIRC) has been issued and prosecution 
has been terminated, all reexamination cases 
go through a screening process currently performed in 
the Office of Patent Legal Administration (OPLA) for 
obvious errors and proper preparation in order to issue 
a reexamination certificate.

The above identified review processes are appropriate 
vehicles for correcting errors, identifying problem 
areas and recognizing trends, providing 
information on the uniformity of practice, and providing 
feedback to the Office personnel that process 
and examine reexamination cases.




 

==2290 Format of Ex Parte Reexamination Certificate==

An ex parte reexamination certificate is issued at 
the close of each ex parte reexamination proceeding 
in which reexamination has been ordered under 
37 
CFR 1.525, except for the following two cases:

(A)The ex parte reexamination proceeding is 
merged with a reissue application pursuant to 37 CFR 
1.565(d). If the ex parte reexamination proceeding is 
concluded by the grant of a reissue patent, the reissue 
patent will constitute the reexamination certificate;

(B)The ex parte reexamination proceeding is 
merged with an inter partes reexamination proceeding 
pursuant to 37 CFR 1.989(a). If the ex parte reexamination 
proceeding is to be concluded as part of a 
merged proceeding containing an inter partes reexamination 
proceeding, a single reexamination certificate 
will issue for both proceedings; see MPEP § 2690.

The ex parte reexamination certificate is formatted 
much the same as the title page of current U.S. patents.


The certificate is titled “Ex Parte Reexamination 
Certificate.” The title is followed by an “ordinal” 
number in parentheses, such as “(235th),” which indicates 
that it is the two hundred and thirty fifth ex partereexamination certificate that has issued. Inter partesreexamination certificates are numbered in a separate 
and new ordinal sequence, beginning with “(1st).” Ex 
parte reexamination certificates continue the ordinal 
numbering sequence that has already been established 
for ex parte reexamination certificates.

The ex parte reexamination certificate number 
will 
always be the patent number of the original 
patent followed by a two-character “kind code” suffix. 
The first letter of the “kind code” suffix is “B” for 
reexamination certificates published prior to January 
2, 2001, and “C” for reexamination certificates published 
on or after January 2, 2001. The second letter 
of the “kind code” suffix is the number of the reexamination 
proceeding of that patent, and thus shows how 
many times that patent has been reexamined.

Note that where the first reexamination certificate 
was a “B1’ certificate and a second reexamination 
certificate then issues, the second reexamination certificate 
will be designated “C2” and NOT “C1.” Thus, 
by looking at the number following the “C,” one will 
be able to ascertain the number of reexamination certificates 
that preceded the certificate being viewed, 
i.e., how many prior reexamination certificates have 
been issued for the patent. (If this were not the practice 
and C1 were used, one would not be able to ascertain 
from the number on the certificate how many B 
certificates came before.)

It should also be noted that the next higher number 
will be given to the reexamination proceeding for 
which the reexamination certificate is issued, regardless 
of whether the proceeding is an ex parte reexamination 
or an inter partes reexamination proceeding.

See MPEP § 901.04(a) for a complete list of the 
kind codes used by the United States Patent and 
Trademark Office.

The certificate denotes the date the certificate was 
issued at INID code [45] (see MPEP § 901.04). The 
title, name of inventor, international and U.S. classification, 
the abstract, and the list of prior art documents 
appear at their respective INID code designations, 
much the same as is presently done in utility patents.

The primary differences, other than as indicated 
above, are:

(A)the filing date and number of the request is 
preceded by “Reexamination Request;”

(B)the patent for which the certification is now 
issued is identified under the heading “Reexamination 
Certificate for”; and

(C)the prior art documents cited at INID code 
[56] will be only those which are part of the reexamination 
file and cited on forms  PTO/SB/08A or 
08B, or PTO/SB/42 (or on a form having a format 
equivalent to one of these forms) (and the documents 
have not been crossed out because they were not considered) 
and PTO-892.

Finally, the certificate will identify the patent 
claims which were confirmed as patentable, canceled, 
disclaimed, and those claims not examined. Only the 
status of the confirmed, canceled, disclaimed, and not 
examined claims will be indicated in the certificate. 
The text of the new and amended claims will be 
printed in the certificate. Any new claims will be 
printed in the certificate completely in italics, and any 
amended claims will be printed in the certificate with 
italics and bracketing indicating the amendments 
thereto. Any prior court decisions will be identified, 
as well as the citation of the court decisions.

==2291 Notice of Ex Parte Reexamination Certificate Issuance in Official Gazette==

The Official Gazette notice will include bibliographic 
information, and an indication of the status of 
each claim after the conclusion of the reexamination 
proceeding. Additionally, a representative claim 
will be published along with an indication of any 
changes to the specification or drawing.

The notice of ex parte reexamination certificate 
will clearly indicate that it is a certificate for a concluded 
ex parte reexamination proceeding, as opposed 
to an inter partes reexamination proceeding.

==2292 Distribution of Certificate==

An e-copy of the reexamination certificate 
will be associated with the e-copy of the patent 
in the search files. A copy of the certificate will also 
be made a part of any patent copies prepared by the 
Office subsequent to the issuance of the certificate.

A copy of the certificate will also be forwarded to 
all depository libraries and to those foreign offices 
which have an exchange agreement with the U.S. 
Patent and Trademark Office.

==2293 Intervening Rights==

35 U.S.C. 307. Certificate of patentability, unpatentability, 
and claim cancellation.



(b)Any proposed amended or new claim determined to be 
patentable and incorporated into a patent following a reexamination 
proceeding will have the same effect as that specified in section 
252 of this title for reissued patents on the right of any person 
who made, purchased, or used within the United States, or 
imported into the United States, anything patented by such proposed 
amended or new claim, or who made substantial preparation 
for the same, prior to issuance of a certificate under the 
provisions of subsection (a) of this section.

The situation of intervening rights resulting from 
reexamination proceedings parallels the intervening 
rights situation resulting from reissue proceedings, 
and the rights detailed in 35 U.S.C. 252 apply equally 
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); Key Mfg. Group, Inc. v. Microdot, 
Inc., 679 F. Supp. 648, 4 USPQ2d 1687 (E.D. 
Mich. 1987).

==2294 Concluded Reexamination Proceedings==

Ex parte reexamination proceedings may be concluded 
in one of four ways:

(A)The prosecution of the proceeding may be terminated, 
and the proceeding itself concluded, by a 
denial of reexamination or vacating the reexamination 
proceeding. (In either case, no Reexamination Certificate 
is issued).

Terminated reexamination files (IFW or paper) in 
which reexamination has been denied or vacated are 
processed by the Central Reexamination Unit (CRU) 
or Technology Center (TC) to provide the partial 
refund set forth in 37 CFR 1.26(c). The reexamination 
file will then be given a 420 status (reexamination 
denied) or a 422 status (reexamination vacated). A 
copy of the PALM “Application Number Information” 
screen and the “Contents” screen is printed. The 
printed copy is annotated by adding the comment 
“PROCEEDING CONCLUDED,” and the annotated 
copy is then scanned into IFW using the miscellaneous 
letter document code.

(B)The proceeding may be concluded under 
37 
CFR 1.570(b) with the issuance of a Reexamination 
Certificate.

A reexamination proceeding that is to be concluded 
in this manner should be processed as set forth in 
MPEP § 2287, reviewed by the  Special Program 
Examiner (SPRE), and then forwarded to the Office 
of Patent Legal Administration (OPLA).

(C)The proceeding may be concluded under 
37 
CFR 1.570(e) where the reexamination proceeding 
has been merged with a reissue proceeding and a reissue 
patent is granted; an individual reexamination certificate 
is not issued, but rather the reissue patent 
serves as the certificate.




 

A reexamination proceeding that is to be concluded 
in this manner should be processed, together with the 
reissue proceeding, as set forth in MPEP § 1455 and 
forwarded to the OPLA in accordance with MPEP 
§
 
1456.

(D)The proceeding may be concluded under 
37 
CFR 1.997(b) where the ex parte reexamination 
proceeding has been merged with an inter partes reexamination 
proceeding and a single reexamination certificate 
is issued.

A reexamination proceeding that is to be concluded 
in this manner should be processed, together with the 
inter partes reexamination, into a merged certificate 
of the nature set forth in MPEP § 2690 and MPEP 
§
 
2694.

==2295 Reexamination of a Reexamination==

This section provides guidance for the processing 
and examination of a reexamination request filed on a 
patent for which a reexamination certificate has 
already issued, or a reexamination certificate issues 
on a prior reexamination, while the new reexamination 
is pending. This reexamination request is generally 
referred to as a “Reexamination of a 
reexamination.”

The reexamination request is to be considered 
based on the claims in the patent as modified by the 
previously issued reexamination certificate, and not 
based on the original claims of the patent. Accordingly, 
when the file for the new reexamination proceeding 
(reexamination of a reexamination) is first 
received by the Central Reexamination Unit (CRU) 
or Technology Center (TC), the reexamination clerk 
will promptly incorporate into the reexamination 
specification all of the changes to the patent made by 
the issued reexamination certificate. Such incorporation 
must be done prior to forwarding the proceeding 
to the examiner for action.

The examiner should review the reexamination 
clerk’s entry of the reexamination certificate to ensure 
that all certificate changes are properly entered so that 
(A) the reexamination will be given on an accurate 
specification and claims, and (B) the appropriate version 
of the patent will be printed in any future reexamination 
certificate that will ultimately issue. The 
examiner will issue a decision on the reexamination 
request based on the patent claims (and specification) 
with the certificate changes entered.

Once reexamination is ordered, the reexamination 
proceeding is conducted in accordance with 35 U.S.C. 
305, 37 CFR 1.550 and MPEP § 2254 - § 2294.

I.PRIOR REEXAMINATION MATURES TO 
CERTIFICATE WHILE LATER REEXAMINATION 
IS PENDING

If a second request for reexamination of a patent is 
filed where the certificate for the first reexamination 
of the patent will issue within 3 months from the filing 
of the second request, the proceedings normally 
will not be merged. If the certificate for the first reexamination 
proceeding will issue before the decision 
on the second request must be decided, the reexamination 
certificate is allowed to issue. The second 
request is then considered based upon the claims in 
the patent as indicated in the issued reexamination 
certificate rather than the original claims of the patent. 
The  Legal Instrument Examiner (LIE) will print out 
a copy of the issued reexamination certificate and 
make it of record in the second reexamination file 
wrapper as a preliminary amendment.

In the order/denial decision on the second request, 
it should be noted that this preliminary amendment 
(the certificate) was entered into the reexamination 
file, and that the determination (order/denial) was 
based upon the new patent claims in the certificate.

A copy of the reexamination certificate should be 
included as an attachment to the order/denial decision 
to ensure that any third party requester of the second 
reexamination has a copy of the certificate claims.

II.PATENT OWNER’S SUBMISSION OF 
AMENDMENTS

Any amendment to the claims (or specification) of 
the reexamination proceeding must be presented as if 
the changes made to the patent text via the reexamination 
certificate are a part of the original patent. Thus, 
all italicized text in the certificate is considered as if 
the text was present without italics in the original 
patent. Further, any certificate text placed in brackets 
is considered as if it were never present in the patent 
at all. 

For example, an amendment in a “reexamination of 
a reexamination” might include italicized text of 
claim 1 of the reexamination certificate as underlined 




 

(or italicized) in the copy of claim 1 submitted in the 
amendment. This would indicate that text already 
present in the patent (via the reexamination certificate) 
is again being added. This would be an improper 
amendment, and as such, an “informal submission.” 
Accordingly, the examiner would notify the patent 
owner that the amendment does not comply with 
37 
CFR 1.530. Form PTOL-475 would be used to provide 
the notification of the defect in the amendment, 
and a 1-month time period would be set for correction 
of the defect. See also MPEP §
 
2266.02.

III.COMPLETION OF THE CHECKLISTS

Upon conclusion of the reexamination proceeding, 
the reexamination file will be processed by the CRU 
or the TC so that the Office of Publication can prepare 
and issue a certificate in accordance with 
35 
U.S.C. 307 and 37 
CFR 1.570. The certificate will 
set forth the results of the reexamination proceeding 
and the content of the patent following the proceeding. 
See MPEP §
 
2287. The examiner will complete a 
checklist, Form PTO-1516, and the reexamination 
clerk will complete the reexamination clerk checklist 
Form PTO-1517. In completing the checklists, the 
examiner and reexamination clerk should keep in 
mind that the “patent” is the original patent as modified 
by the reexamination certificate. For example, 
claims canceled by the prior reexamination certificate 
should be listed in Item 8 - “Claim(s) _____ (and) 
_____ was (were) previously canceled.” Likewise, in 
Item 12 of the examiner checklist - “Claim(s) ____ 
(and) ____ is (are) determined to be patentable as 
amended.”; any claims amended only by the prior 
reexamination certificate (i.e., not further amended in 
the present reexamination) should not be listed. 

Each “reexamination of a reexamination” must be 
reviewed by a  Special Program Examiner and a 
paralegal to ensure compliance with the above guidelines.