¶ 26.01 Reasonable likelihood established
The present request for inter partes reexamination establishes a reasonable likelihood that requester will prevail with respect to claim [1] of United States Patent Number [2].
Extensions of time under 37 CFR 1.136(a) will not be permitted in inter partes reexamination proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant" and not to the patent owner in a reexamination proceeding. Additionally, 35 U.S.C. 314(c) requires that inter partes reexamination proceedings "will be conducted with special dispatch" (37 CFR 1.937 ). Patent owner extensions of time in inter partes reexamination proceedings are provided for in 37 CFR 1.956. Extensions of time are not available for third party requester comments, because a comment period of 30 days from service of patent owner’s response is set by statute. 35 U.S.C. 314(b)(2).
¶ 26.02 No reasonable likelihood established
For the reasons set forth below, the present request for inter partes reexamination fails to establish a reasonable likelihood that requester will prevail with respect to at least one of the challenged claims of United States Patent Number [1].
¶ 26.03 Issue Not Within Scope of Inter Partes Reexamination
An issue has been raised in the present reexamination proceeding that is not within the scope of inter partes reexamination proceedings. [1]. This issue will not be considered in the present proceeding. 37 CFR 1.906(c).
Examiner Note:
1. In bracket 1, identify the issues.
2. This paragraph may be used either when the patent owner or the third party requester raises issues such as (but not limited to) public use or on sale, conduct, or abandonment of the invention. Such issues should not be raised independently by the patent examiner.
¶ 26.03.01 Rejection, 35 U.S.C. 314(a), Claim Enlarges Scope of Patent
Claim [1] rejected under 35 U.S.C. 314(a) as enlarging the scope of the claims of the patent being reexamined. 35 U.S.C. 314(a) states that "no proposed amended or new claim enlarging the scope of the claims of the patent shall be permitted" in an inter partes reexamination proceeding. A claim presented in a reexamination "enlarges the scope" of the patent claims where the claim is broader than the claims of the 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 § 2658.
¶ 26.04 First Action Not Mailed With Order
An Office action on the merits does not accompany this order for inter partes reexamination. An Office action on the merits will be provided in due course.
¶ 26.05 Papers To Be Submitted in Response to Action
In order to ensure full consideration of any amendments, affidavits or declarations, or other documents as evidence of patentability, such documents must be submitted in response to this Office action. Submissions after the next Office action, which is intended to be an Action Closing Prosecution (ACP), will be governed by 37 CFR 1.116(b) and (d), which will be strictly enforced.
¶ 26.05.01 Improper Amendment in an Inter Partes 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 inter partes reexamination proceeding is required.
A shortened statutory period for response to this letter is set to expire ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter. If the patent owner fails to timely correct this informality, the amendment will be held not to be an appropriate response, and the consequences set forth in 37 CFR 1.957(b) or (c) will result. See MPEP § 2666.10
Examiner Note:
This paragraph may be used for any 37 CFR 1.530(d)-(j) informality as to a proposed amendment submitted in a reexamination proceeding.
¶ 26.06 Submission Not Fully Responsive to Office Action
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 supply the omission or correction to thereby provide a full response to the prior Office action.
A shortened statutory period for response to this letter is set to expire (a) ONE MONTH, or THIRTY DAYS (whichever is longer), from the mailing date of this letter, or (b) after the due date for response to the last Office action, whichever of (a) or (b) is longer. THE PERIOD FOR RESPONSE SET IN THIS LETTER MAY BE EXTENDED UNDER 37 CFR 1.956.
If patent owner fails to timely supply the omission or correction and thereby provide a full response to the prior Office action, the consequences set forth in 37 CFR 1.957(b) or (c) will result. See MPEP § 2666.10.
Examiner Note:
1. In bracket 2, the examiner should explain the nature of the omitted point necessary to complete the response, i.e., what part of the Office action was not responded to. The examiner should also clearly indicate what is needed to correct the omission.
2. 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 § 2666.30.
3. This practice does not apply where there has been a deliberate omission of some necessary part of a complete response. See MPEP § 2666.30.
¶ 26.07 Action Closing Prosecution
This is an ACTION CLOSING PROSECUTION (ACP); see MPEP § 2671.02.
- (1) Pursuant to 37 CFR 1.951(a), the patent owner may once file written comments limited to the issues raised in the reexamination proceeding and/or present a proposed amendment to the claims which amendment will be subject to the criteria of 37 CFR 1.116 as to whether it shall be entered and considered. Such comments and/or proposed amendments must be filed within a time period of 30 days or one month, whichever is longer, from the mailing date of this action. Where the patent owner files such comments and/or a proposed amendment, the third party requester may once file comments under 37 CFR 1.951(b) responding to the patent owner’s submission within 30 days from the date of service of the patent owner’s submission on the third party requester
- (2) If the patent owner does not timely file comments and/or a proposed amendment pursuant to 37 CFR 1.951(a), then the third party requester is precluded from filing comments under 37 CFR 1.951(b).
- (3) Appeal cannot be taken from this action, since it is not a final Office action.
¶ 26.08 Right of Appeal Notice
This is a RIGHT OF APPEAL NOTICE (RAN); see MPEP § 2673.02 and § 2674. The decision in this Office action as to the patentability or unpatentability of any original patent claim, any proposed amended claim and any new claim in this proceeding is a FINAL DECISION.
No amendment can be made in response to the Right of Appeal Notice in an inter partes reexamination. 37 CFR 1.953(c). Further, no affidavit or other evidence can be submitted in an inter partes reexamination proceeding after the right of appeal notice, except as provided in 37 CFR 1.981 or as permitted by 37 CFR 41.77(b)(1). 37 CFR 1.116(f).
Each party has a thirty-day or one-month time period, whichever is longer, to file a notice of appeal. The patent owner may appeal to the Board with respect to any decision adverse to the patentability of any original or proposed amended or new claim of the patent by filing a notice of appeal and paying the fee set forth in 37 CFR 41.20(b)(1). The third party requester may appeal to the Board with respect to any decision favorable to the patentability of any original or proposed amended or new claim of the patent by filing a notice of appeal and paying the fee set forth in 37 CFR 41.20(b)(1).
In addition, a patent owner who has not filed a notice of appeal may file a notice of cross appeal within fourteen days of service of a third party requester’s timely filed notice of appeal and pay the fee set forth in 37 CFR 41.20(b)(1). A third party requester who has not filed a notice of appeal may file a notice of cross appeal within fourteen days of service of a patent owner’s timely filed notice of appeal and pay the fee set forth in 37 CFR 41.20(b)(1).
Any appeal in this proceeding must identify the claim(s) appealed, and must be signed by the patent owner (for a patent owner appeal) or the third party requester (for a third party requester appeal), or their duly authorized attorney or agent.
Any party that does not file a timely notice of appeal or a timely notice of cross appeal will lose the right to appeal from any decision adverse to that party, but will not lose the right to file a respondent brief and fee where it is appropriate for that party to do so. If no party files a timely appeal, the reexamination prosecution will be terminated, and the Director will proceed to issue and publish a certificate under 37 CFR 1.997 in accordance with this Office action.
¶ 26.67 No Receipt of Rebuttal Brief(s)
Appellant(s) was given a period of one month from the mailing date of the examiner’s answer within which to file a rebuttal brief in response to the examiner’s answer. No rebuttal brief has been received within that time period. Accordingly, the reexamination proceeding is being forwarded to the Board for decision on the appeal(s).
Prosecution remains closed. Any further reply/comments by any party will not be considered, and may be returned to the party that submitted it.
__________________________
Central Reexamination Unit
¶ 26.67.01 Periods for Seeking Court Review or Rehearing Have Lapsed
The periods for seeking court review of, or a rehearing of, the decision of the Board rendered [1] have expired and no further action has been taken by any party to the appeal. Accordingly, the appeal in this reexamination proceeding is considered terminated; see 37 CFR 1.979(b). The present Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) is issued in accordance with MPEP § 2687 in order to terminate the present reexamination prosecution.
Examiner Note:
In bracket 1, enter the date of the Board decision.
¶ 26.68 Lack of Service in inter partes examination-37 CFR 1.903
The submission filed [1] is defective because it appears that the submission was not served on [2]. After the filing of a request for inter partes 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 third party requester proceedings are merged) in the inter partes reexamination proceeding in the manner provided in 37 CFR 1.248. See 37 CFR 1.903.
It is required that service of the submission be made, and a certificate of service be provided to the Office, within ONE MONTH from the date of this letter or within the time remaining in the response period of the last Office action (if applicable), whichever is longer.
Examiner Note:
1. This paragraph may be used where a submission to the Office was not served as required in an inter partes reexamination proceeding.
2. In bracket 2, insert "patent owner" or "third party requester," whichever is appropriate.
¶ 26.69 Examiner’s Amendment Accompanying Notice of Intent to Issue 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]
¶ 26.70 Reasons for Patentability and/or Confirmation in Inter Partes Reexamination
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 the 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 Inter Partes Reexamination Certificate, PTOL-2068 (item number 3).
¶ 26.73 Correspondence and Inquiry as to Office Actions
All correspondence relating to this inter partes 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 Inter Partes Reexam
Attn: Central Reexamination Unit
Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
By FAX to: (571) 273-9900
Central Reexamination Unit
By hand: Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i)(C) and (ii) states that correspondence (except for a request 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 or earlier communications from the examiner, or as to the status of this proceeding, should be directed to the Central Reexamination Unit at telephone number (571) 272-7705.
Examiner Note:
1. This form paragraph is used at the end of inter partes reexamination communications.
2. The examiner having charge of the proceeding is not to be contacted by the parties to the proceeding.
¶ 26.75 Time Period for Response under 37 CFR 41.77(e)
Periods for response to this determination are identified in 37 CFR 41.77(e). Following expiration of those time periods, the proceeding will be returned to the Board for reconsideration under 37 CFR 41.77(f). Note that under 37 CFR 41.77(e), patent owner and third party requester responsive comments are due one month from the mailing date of this determination, and both third party requester and patent owner replies to those comments are then due one month from date of service of the comments. These time periods cannot be extended. See 37 CFR 41.77(g).
¶ 26.80 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]. Claims [1] were held invalid by the [4].
Examiner Note:
1. In bracket 1, insert the claims held invalid.
2. In bracket 2, insert the patentee (e.g., Rosenthal, J. Doe et al).
3. In bracket 3, insert the decision (e.g., ABC Corp. v. John Doe, 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).