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¶ 22.01 New Question of Patentability

A substantial new question of patentability affecting claim [1] of United States Patent Number [2] is raised by the request for ex parte 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, 35 U.S.C. 305 requires that ex parte reexamination proceedings "will be conducted with special dispatch" (37 CFR 1.550(a) ). Extensions of time in ex parte reexamination proceedings are provided for in 37 CFR 1.550(c).

¶ 22.01.01 Criteria for Applying "Old Art" as Sole Basis for Reexamination

The above [1] is based solely on patents and/or printed publications already cited/considered in an earlier concluded examination or review of the patent being reexamined, or has been raised to or by the Office in a pending reexamination or supplemental examination of the patent. On November 2, 2002, Public Law 107-273 was enacted. Title III, Subtitle A, Section 13105, part (a) of the Act revised the reexamination statute by adding the following new last sentence to 35 U.S.C. 303(a) and 312(a):

"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."

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

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

[3]

Examiner Note:

1. In bracket 1, insert "substantial new question of patentability" if the present form paragraph is used in an order granting reexamination (or a TC or CRU Director’s decision on petition of the denial of reexamination). If this form paragraph is used in an Office action, insert "ground of rejection."

2. In bracket 2, insert the old art that is being applied as the sole basis of the SNQ. For example, "the patent to J. Doe" or "the patent to J. Doe when taken with the Jones publication" or "the combination of the patent to J. Doe and the Smith publication" could be inserted. Where more than one SNQ is presented based solely on old art, the examiner would insert all such bases for SNQ.

3. In bracket 3, for each basis identified in bracket 2, explain how and why that fact situation applies in the proceeding being acted on. The explanation could be for example that the old art is being presented/viewed in a new light, or in a different way, as compared with its use in the earlier examination(s), in view of a material new argument or interpretation presented in the request. See Ex parte Chicago Rawhide Mfg. Co., 223 USPQ 351 (Bd. Pat. App. & Inter. 1984).

4. This form paragraph is only used the first time the "already cited/considered" art is applied, and is not repeated for the same art in subsequent Office actions.

¶ 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.

¶ 22.03 Issue Not Within Scope of Ex Parte Reexamination

An issue has been raised in the present reexamination proceeding that is not within the scope of an ex parte reexamination ordered under 35 U.S.C. 304. [1]. This issue will not be considered in the present proceeding. 37 CFR 1.552(c).

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, conduct, or abandonment of the invention. Such issues should not be raised independently by the patent examiner.

¶ 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.

¶ 22.04.01 Extension of Time in 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, 35 U.S.C. 305 requires that reexamination proceedings "will be conducted with special dispatch" ( 37 CFR 1.550(a) ). Extensions of time in ex parte reexamination proceedings are provided for in 37 CFR 1.550(c).

¶ 22.05 Reexamination (Ex Parte or Inter Partes) Based on Reissue Claims

In view of the surrender of original Patent No. [1] and the granting of Reissue Patent No. [2] which issued on [3], all subsequent proceedings in this reexamination will be based on the reissue patent claims.

¶ 22.06 Examiner’s Amendment Accompanying Notice of Intent To Issue Ex Parte Reexamination Certificate

An examiner’s amendment to the record appears below. The changes made by this examiner’s amendment will be reflected in the reexamination certificate to issue in due course.

[1]

¶ 22.07 Litigation Reminder (Patent Owner Request or Director Ordered Reexamination)

Examiner Note:

This form paragraph is to be used when granting an ex parte reexamination request filed by a patent owner and in the first action in a Director Ordered reexamination or reexamination ordered under 35 U.S.C. 257.

¶ 22.08 Litigation Reminder (Third Party Requester)

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. [1] throughout the course of this reexamination proceeding. The third party requester is also reminded of the ability to similarly apprise the Office of any such activity or proceeding throughout the course of this reexamination proceeding. See MPEP §§ 2207, 2282 and 2286.

Examiner Note:

This form paragraph is to be used when granting an ex parte reexamination request filed by a third party requester.

¶ 22.09 Ex Parte Reexamination - Action Is Final

THIS ACTION IS MADE FINAL.

A shortened statutory period for response to this action is set to expire [1] from the mailing date of this action.

Extensions of time under 37 CFR 1.136(a) do not apply in reexamination proceedings. The provisions of 37 CFR 1.136 apply only to "an applicant" and not to parties in a reexamination proceeding. Further, in 35 U.S.C. 305 and in 37 CFR 1.550(a), it is required that reexamination proceedings "will be conducted with special dispatch within the Office."

Extensions of time in reexamination proceedings are provided for in 37 CFR 1.550(c) . A request for extension of time must specify the requested period of extension and it must be accompanied by the petition fee set forth in 37 CFR 1.17(g). Any request for an extension in a third party requested ex parte reexamination must be filed on or before the day on which action by the patent owner is due, and the mere filing of a request will not effect any extension of time. A request for an extension of time in a third party requested ex parte reexamination will be granted only for sufficient cause, and for a reasonable time specified. Any request for extension in a patent owner requested ex parte reexamination (including reexamination ordered under 35 U.S.C. 257 ) for up to two months from the time period set in the Office action must be filed no later than two months from the expiration of the time period set in the Office action. A request for an extension in a patent owner requested ex parte reexamination for more than two months from the time period set in the Office action must be filed on or before the day on which action by the patent owner is due, and the mere filing of a request for an extension for more than two months will not effect the extension. The time for taking action in a patent owner requested ex parte reexamination will not be extended for more than two months from the time period set in the Office action in the absence of sufficient cause or for more than a reasonable time.

The filing of a timely first response to this final rejection will be construed as including a request to extend the shortened statutory period for an additional two months. In no event, however, will the statutory period for response expire later than SIX MONTHS from the mailing date of the final action. See MPEP § 2265.

Examiner Note:

1. This form paragraph may be used only in reexamination proceedings.

2. In bracket 1, insert the appropriate period for response, which is normally TWO (2) MONTHS.

¶ 22.10 Ex Parte Reexamination - Action Is Final, Necessitated by Amendment

Patent owner’s amendment filed [1] necessitated the new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).

A shortened statutory period for response to this action is set to expire [2] from the mailing date of this action.

Extensions of time in reexamination proceedings are provided for in 37 CFR 1.550(c). A request for extension of time must specify the requested period of extension and it must be accompanied by the petition fee set forth in 37 CFR 1.17(g). Any request for an extension in a third party requested ex parte reexamination must be filed on or before the day on which action by the patent owner is due, and the mere filing of a request will not effect any extension of time. A request for an extension of time in a third party requested ex parte reexamination will be granted only for sufficient cause, and for a reasonable time specified. Any request for extension in a patent owner requested ex parte reexamination (including reexamination ordered under 35 U.S.C. 257 ) for up to two months from the time period set in the Office action must be filed no later than two months from the expiration of the time period set in the Office action. A request for an extension in a patent owner requested ex parte reexamination for more than two months from the time period set in the Office action must be filed on or before the day on which action by the patent owner is due, and the mere filing of a request for an extension for more than two months will not effect the extension. The time for taking action in a patent owner requested ex parte reexamination will not be extended for more than two months from the time period set in the Office action in the absence of sufficient cause or for more than a reasonable time.

Examiner Note:

1. This form paragraph may be used only in reexamination proceedings.

2. In bracket 1, insert filing date of amendment.

3. In bracket 2, insert the appropriate period for response, which is normally TWO (2) MONTHS.

4. As with all other Office correspondence on the merits in a reexamination proceeding, the final Office action must be signed by a primary examiner.

¶ 22.11 Rejection, 35 U.S.C. 305, Claim Enlarges Scope of Patent - Ex Parte Reexamination

Claim [1] rejected under 35 U.S.C. 305 as enlarging the scope of the claim(s) of the patent being reexamined. In 35 U.S.C. 305, it is stated that "[n]o proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding...." A claim presented in a reexamination "enlarges the scope" of the patent claim(s) where the claim is broader than each and every claim of the patent. A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect, even though it may be narrower in other respects.

[2]

Examiner Note:

The claim limitations which are considered to broaden the scope should be identified and explained in bracket 2. See MPEP § 2258.

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

Patent owner is notified that any proposed amendment to the specification and/or claims in this reexamination proceeding must comply with 37 CFR 1.530(d)-(j), must be formally presented pursuant to 37 CFR 1.52(a) and (b), and must contain any fees required by 37 CFR 1.20(c).

Examiner Note:

This paragraph may be used in the order granting reexamination and/or in the first Office action to advise patent owner of the proper manner of making amendments in a reexamination proceeding.

¶ 22.13 Improper Amendment in an Ex Parte Reexamination - 37 CFR 1.530(d)-(j)

The amendment filed [1] proposes amendments to [2] that do not comply with 37 CFR 1.530(d)-(j), which sets forth the manner of making amendments in reexamination proceedings. A supplemental paper correctly proposing amendments in the present ex parte reexamination proceeding is required.

A shortened statutory period for response to this letter is set to expire [3] from the mailing date of this letter. If patent owner fails to timely correct this informality, the amendment will be held not to be an appropriate response, prosecution of the present ex parte reexamination proceeding will be terminated, and a reexamination certificate will issue. 37 CFR 1.550(d).

Examiner Note:

1. This paragraph may be used for any 37 CFR 1.530(d)-(j) informality as to a proposed amendment submitted in a reexamination proceeding prior to final rejection. After final rejection, the amendment should not be entered and patent owner informed of such in an advisory Office action using Form PTOL 467.

2. In bracket 3, if the reexamination was requested by a third party requester, the examiner should insert "ONE MONTH or thirty days, whichever is longer". If the reexamination was requested by the patent owner, if the reexamination was ordered under 35 U.S.C. 257, or if it is a Director ordered reexamination, the examiner should insert "TWO MONTHS."

¶ 22.14 Submission Not Fully Responsive to Non-Final Office Action - Ex Parte Reexamination

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

A shortened statutory period for response to this letter is set to expire [3] from the mailing date of this letter. If patent owner fails to timely deal with the omission and thereby provide a full response to the prior Office action, prosecution of the present reexamination proceeding will be terminated. 37 CFR 1.550(d).

Examiner Note:

1. In bracket 2, the examiner should explain the nature of the omitted point necessary to complete the response, i.e., what part of the Office action was not responded to. The examiner should also make it clear what is needed to deal with the omitted point.

2. In bracket 3, if the reexamination was requested by a third party requester, the examiner should insert "ONE MONTH or thirty days, whichever is longer". If the reexamination was requested by the patent owner, if the reexamination was ordered under 35 U.S.C. 257, or if it is a Director-ordered reexamination, the examiner should insert "TWO MONTHS".

3. This paragraph may be used for a patent owner communication that is not completely responsive to the outstanding (i.e., prior) Office action. See MPEP § 2266.01.

4. This practice does not apply where there has been a deliberate omission of some necessary part of a complete response.

5. This paragraph is only used for a response made prior to final rejection. After final rejection, an advisory Office action and Form PTOL 467 should be used, and the patent owner informed of any non-entry of the amendment.

¶ 22.15 Lack of Service - 37 CFR 1.550(f)

The submission filed on [1] is defective because it appears that the submission was not served on the [2]. After the filing of a request for 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 (or parties where two or more third party requester proceedings are merged) in the reexamination proceeding in the manner provided in 37 CFR 1.248. See 37 CFR 1.550(f).

It is required that service of the submission be made, and a certificate of service be provided to the Office within a shortened statutory period of ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter. If service of the submission is not timely made, the submission may be denied consideration.

Examiner Note:

1. This paragraph may be used where a submission to the Office was not served as required in a third party requester reexamination proceeding.

2. In bracket 2, insert --patent owner-- or --third party requester--, whichever is appropriate.

¶ 22.16 Reasons For Patentability and/or Confirmation

STATEMENT OF REASONS FOR PATENTABILITY AND/OR CONFIRMATION

The following is an examiner’s statement of reasons for patentability and/or confirmation of the claims found patentable in this reexamination proceeding: [1]

Any comments considered necessary by PATENT OWNER regarding the above statement must be submitted promptly to avoid processing delays. Such submission by the patent owner should be labeled: "Comments on Statement of Reasons for Patentability and/or Confirmation" and will be placed in the reexamination file.

Examiner Note:

This form paragraph may be used as an attachment to the Notice of Intent to Issue Ex Parte Reexamination Certificate, PTOL-469 (item number 2).

¶ 22.20 Claims Held Invalid By Court, No Longer Being Reexamined

Claims [1] of the [2] patent are not being reexamined in view of the final decision of [3]. Claim(s) [1] was/were held invalid/unenforceable by the [4].

Examiner Note:

1. In bracket 1, insert the claim(s) held invalid.

2. In bracket 2, insert the patentee (e.g., Rosenthal, J. Doe et al).

3. In bracket 3, insert the decision (e.g., ABC Corp. v. Smith, 888 F. 3d 88, 999 USPQ2d 99 (Fed. Cir. 1999) or XYZ Corp. v. Jones, 888 F. Supp. 2d 88, 999 USPQ2d 1024 (N.D. Cal. 1999)).

4. In bracket 4, insert the name of the court (e.g., the Court of Appeals for the Federal Circuit, or the Federal District Court).

¶ 22.73 Correspondence and Inquiry as to Office Actions

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

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

By Mail to: Mail Stop Ex Parte Reexam

Central Reexamination Unit

Commissioner for Patents

United States Patent & Trademark Office

P.O. Box 1450

Alexandria, VA 22313-1450

By FAX to: (571) 273-9900

Central Reexamination Unit

By hand: Customer Service Window

Randolph Building

401 Dulany Street

Alexandria, VA 22314

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

Any inquiry concerning this communication should be directed to [1] at telephone number [2].

Examiner Note:

1. This form paragraph is used at the end of ex parte reexamination communications.

2. In bracket 1, insert the name of the examiner having charge of the proceeding.

3. In bracket 2, insert the examiner’s telephone number.