¶ 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
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 1.906 (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.
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 of Patent Appeals and Interferences 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 of Patent Appeals and Interferences 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.
¶ 26.09 Brief is Defective and/or is Not Complete
The [1] brief filed [2] by [3] is defective and/or is not complete as to the provisions of 37 CFR 41.67 (a) and (c) (for appellant brief) or 37 CFR 41.68 (a) and (b) (for respondent brief) for the following reasons:
Examiner Note:
1. In bracket 1, fill in either "appellant" or "respondent".
2. In bracket 2, fill in the date the brief was filed.
3. In bracket 3, fill in either "the patent owner" or "the third party requester".
4. This form paragraph should be followed by a statement of all instances of non-compliance and all defects, and an explanation detailed enough for the party to understand how to deal with each non-compliance and defect noted in the letter.
5. One of form paragraphs 26.10 or 26.11 should be used at the end of this action.
¶ 26.10 Informal Appellant Brief-Period for Response Under 37 CFR 41.67 (d)
Appellant, [1] is required to comply with the provisions of 37 CFR 41.67 (a) and (c) and to correct all defects noted in this letter as to the appellant brief. Appellant, [2] is given a period of ONE MONTH from the date of this letter or the time remaining in the original two month period (whichever is the longer) for filing an amended complete appellant brief. If an amended complete brief that fully complies with the requirements of this letter is not timely submitted, the appellant’s appeal will be dismissed as of the date of expiration of the presently set time period. THE PERIOD FOR RESPONSE SET IN THIS LETTER CANNOT BE EXTENDED. 37 CFR 41.67 (d).
Examiner Note:
In brackets 1 and 2, fill in either "the patent owner" or "the third party requester".
¶ 26.11 Informal Respondent Brief-Period for Response Under 37 CFR 41.68 (c)
Respondent, [1] is required to comply with the provisions of 37 CFR 41.68 (a) and (b) and to correct all defects noted in this letter as to the respondent brief. Respondent [2] is given a period of ONE MONTH from the date of this letter for filing an amended complete respondent brief. If an amended complete brief that fully complies with the requirements of this letter is not timely submitted, the respondent brief will not be formally received into the record and will not be considered. THE PERIOD FOR RESPONSE SET IN THIS LETTER CANNOT BE EXTENDED. 37 CFR 41.68 (c).
Examiner Note:
1. In brackets 1 and 2, fill in either "the patent owner" or "the third party requester" .
2. In the case of the respondent brief, the new one month period will always extend longer than the original one month period, thus the longer of the two need not be given, as was done in form paragraph 26.10 where the original period for the appellant brief is two months.
¶ 26.50 Heading for Examiner’s Answer
EXAMINER’S ANSWER
This is in response to the following appellant (and respondent) brief(s) on appeal: [1]
Examiner Note:
In bracket 1, identify for each brief (a) the party (patent owner or third party requester), (b) the type of brief (appellant or respondent), and (c) the date it was filed. Where there is one third party requester (the usual situation), indicate "third party requester" ; where there are two or more third party requesters (a merged proceeding), indicate "third party requester" followed by the name of the third party requester (e.g., "third party requester Smith" or "third party requester XYZ Corporation" ).
¶ 26.50.01 Real Party in Interest
(1) Real Party in Interest
Examiner Note:
Follow this paragraph with one or more of form paragraphs 26.50.02 and/or 26.50.03.
¶ 26.50.02 Acknowledgment of Identification of a Real Party in Interest in a Brief
A statement identifying the real party in interest is contained in [1] brief(s).
Examiner Note:
In bracket 1, identify the brief or briefs containing a statement identifying the real party in interest. For example, "the appellant third party requester Jones" or "the appellant patent owner and the respondent third party requester Smith" or "all of the" can be used where appropriate.
¶ 26.50.03 No Identification of a Real Party in Interest in the Briefs
In the present appeal, [1] brief(s) does/do not contain a statement identifying the real party in interest. It is presumed that the party named in the caption of the brief(s) is the real party in interest at the time the brief was filed. The Board of Patent Appeals and Interferences, however, may subsequently exercise its discretion to require an explicit statement as to the real party in interest.
Examiner Note:
In bracket 1, identify the brief or briefs not containing a statement identifying the real party in interest. For example, "the appellant third party requester Jones" or "the appellant patent owner and the respondent third party requester Smith" or "all of the" can be used where appropriate.
¶ 26.50.04 Related Appeals and Interferences
(2) Related appeals and interferences
Examiner Note:
Follow this paragraph with form paragraph 26.50.05 or 26.50.06.
¶ 26.50.05 Identification of the Related Appeals and Interferences
The following are the related appeals, interferences, and judicial proceedings known to the examiner which may be related to, directly affect or be directly affected by or have a bearing on the Board’s decision in the pending appeal:
Examiner Note:
1. Follow this form paragraph with an identification by application, patent, appeal or interference number of all other prior and pending appeals, interferences or judicial proceedings known to the examiner which may be related to, directly affect or be directly affected by or have a bearing on the Board’s decision in the pending appeal.
2. Include a copy of all court and Board decisions identified in this section in a related proceeding(s) appendix using form paragraphs 26.61.01 and 26.61.03.
¶ 26.50.06 No Related Appeals and Interferences Identified
The examiner is not aware of any related appeals, interferences, or judicial proceedings which will directly affect or be directly affected by or have a bearing on the Board’s decision in the pending appeal.
¶ 26.51 Status of Claims
(3) Status of claims
Examiner Note:
Follow form paragraph 26.51 with one or more of form paragraphs 26.51.01 and/or 26.51.02.
¶ 26.51.01 Agreement With Statement of Status of Claims
The statement of the status of claims contained in the [1] brief(s) is correct.
Examiner Note:
1. In bracket 1, identify the brief or briefs containing the correct status of the claims. For example, "appellant third party requester Jones" or "appellant patent owner and respondent third party requester Smith" can be used where appropriate.
2. Use form paragraph 26.51.02 where there is a disagreement with the statement of status of the claims stated in the brief(s).
¶ 26.51.02 Disagreement With Statement of Status of Claims Stated in Briefs
The statement of the status of claims contained in the [1] briefs is incorrect. [2].
A correct statement of the status of the claims is as follows: [3]
Examiner Note:
1. In bracket 1, identify the brief or briefs containing the incorrect statement of the status of the claims. For example, "appellant third party requester Jones" or "appellant patent owner and respondent third party requester Smith" can be used where appropriate.
2. In bracket 2, identify the area of disagreement with each brief and the reasons for the disagreement.
3. For bracket 3, see form paragraphs 12.151.03 - 12.151.10 for the type of material that should be included. Remember that a "final rejection" is not made in a reexamination. Thus, use "Action Closing Prosecution" and "Right of Appeal Notice" where each is appropriate.
¶ 26.52 Status of Amendments
(4) Status of Amendments After Action Closing Prosecution
Examiner Note:
Identify status of all amendments submitted after Action Closing Prosecution. Use one or more of form paragraphs 26.52.01 - 26.52.05, if appropriate.
¶ 26.52.01 Agreement With Statement of the Status of Amendments After Action Closing Prosecution
The statement of the status of amendments after Action Closing Prosecution contained in the [1] brief(s) is correct.
Examiner Note:
1. In bracket 1, identify the brief or briefs containing the correct statement of the status of amendments after Action Closing Prosecution. For example, "appellant third party requester Jones" or "appellant patent owner and respondent third party requester Smith" can be used where appropriate.
2. Use form paragraph 26.52.02 where there is a disagreement with the statement of the status of the amendments after ACP stated in the brief(s).
¶ 26.52.02 Disagreement With Statement of the Status of Amendments After Action Closing Prosecution Stated in Briefs
The statement of the status of amendments after Action Closing Prosecution contained in the [1] brief(s) is incorrect. [2]
Examiner Note:
1. In bracket 1, identify the brief or briefs containing the incorrect statement of the status of amendments after Action Closing Prosecution. For example, "appellant third party requester Jones" or "appellant patent owner and respondent third party requester Smith" can be used where appropriate.
2. In bracket 2, identify the area of disagreement with each brief and the reasons for the disagreement.
¶ 26.52.03 Amendment After Action Closing Prosecution Entered
The amendment after Action Closing Prosecution filed on [1] has been entered.
Examiner Note:
In bracket 1, insert the date of any entered amendment.
¶ 26.52.04 Amendment After Action Closing Prosecution Not Entered
The amendment after Action Closing Prosecution filed on [1] has not been entered.
Examiner Note:
In bracket 1, insert the date of any amendment denied entry.
¶ 26.52.05 No Amendment After Action Closing Prosecution
No amendment after Action Closing Prosecution has been filed.
¶ 26.53 Summary of Claimed Subject Matter
(5) Summary of Claimed Subject Matter
Examiner Note:
Follow form paragraph 26.53 with either form paragraphs 26.53.01 or 26.53.02.
¶ 26.53.01 Agreement With the Summary of Claimed Subject Matter in Brief(s)
The summary of claimed subject matter contained in the [1] brief(s) is correct.
Examiner Note:
1. In bracket 1, identify the brief or briefs containing the incorrect summary of claimed subject matter. For example, "appellant third party requester Jones" or "appellant patent owner and respondent third party requester Smith" can be used where appropriate.
2. Use form paragraph 26.53.02 where there is disagreement as to the summary.
¶ 26.53.02 Disagreement With the Summary of Claimed Subject Matter in Brief(s)
The summary of claimed subject matter contained in the [1] brief(s) is deficient because [2].
Examiner Note:
1. In bracket 1, identify the brief or briefs containing the incorrect summary of invention. For example, "appellant third party requester Jones" or "appellant patent owner and respondent third party requester Smith" can be used where appropriate.
2. In bracket 2, explain the deficiency of the summary of claimed subject matter. Include a correct summary of the invention if necessary for a clear understanding of the claimed invention.
¶ 26.54 Grounds of Rejection to be Reviewed on Appeal
(6) Grounds of Rejection to be Reviewed on Appeal
Examiner Note:
Follow form paragraph 26.54 with form paragraph 26.54.01 or 26.54.02.
¶ 26.54.01 Agreement With Statement of the Grounds of Rejection on Appeal
The statement of the grounds of rejection contained in the [1] brief(s) is correct.
Examiner Note:
1. In bracket 1, identify the brief or briefs containing the correct statement of the grounds of rejection on appeal. For example, "appellant third party requester Jones" or "appellant patent owner and respondent third party requester Smith" can be used where appropriate.
2. Follow this form paragraph with form paragraph 26.54.011 if there are grounds of rejection that have not been withdrawn and that have not been presented by an appellant for review.
3. Follow this form paragraph with form paragraph 26.54.012 to list any non-appealable issues in the brief(s).
4. Use form paragraph 26.54.02 where there is disagreement as to the statement of the grounds of rejection on appeal.
¶ 26.54.011 Grounds of Rejection Not on Review
GROUNDS OF REJECTION NOT ON REVIEW
The following grounds of rejection have not been withdrawn by the examiner, and they have not been presented by an appellant for review. [1].
Examiner Note:
In bracket 1, identify each ground of rejection that has not been withdrawn and has not been presented by an appellant for review.
¶ 26.54.012 Nonappealable Issue in Brief
NON-APPEALABLE ISSUE(S)
The [1] brief presents arguments relating to [2]. This issue relates to petitionable subject matter under 37 CFR 1.181 and not to appealable subject matter. See MPEP § 1002 and § 1201.
Examiner Note:
1. In bracket 1, identify the brief containing the petitionable issues. For example, "appellant third party requester Jones" or "appellant patent owner" can be used where appropriate.
2. When more than one brief has a petitionable issue, this form paragraph should be used for each of these briefs.
¶ 26.54.02 Disagreement With Statement of the Grounds of Rejection on Appeal
The [1] brief(s) does/do not provide a correct statement of the grounds of rejection to be reviewed on appeal. [2] The grounds of rejection to be reviewed on appeal are as follows: [3].
Examiner Note:
1. In bracket 1, identify the brief or briefs containing the incorrect statement of the grounds of rejection on appeal.
2. In bracket 2, indicate the area of disagreement and the reasons for the disagreement.
3. In bracket 3 set forth the correct statement of the grounds of rejection on appeal.
¶ 26.55 Findings of Patentability to be Reviewed on Appeal
(7) Findings of Patentability to be Reviewed on Appeal
Examiner Note:
Follow form paragraph 26.55 with form paragraph 26.55.01 or 26.55.02.
¶ 26.55.01 Agreement With Statement of the Findings of Patentability on Appeal
The statement of the findings of patentability contained in the [1] brief(s) is correct.
Examiner Note:
1. In bracket 1, identify the brief or briefs containing the correct statement of the findings of patentability on appeal. For example "appellant third party requester Jones" or "appellant patent owner and respondent third party requester Smith" can be used where appropriate.
2. Follow this form paragraph with form paragraph 26.55.011 if there are findings of patentability that have not been withdrawn and that have not been presented by an appellant for review.
3. Form paragraph 26.54.012 may be used to list any non-appealable issues in the brief(s).
4. Use form paragraph 26.55.02 where there is disagreement as to the statement of the findings of patentability on appeal.
¶ 26.55.011 Findings of Patentability Not on Review
FINDINGS OF PATENTABILITY NOT ON REVIEW
The following grounds of rejection have not been withdrawn by the examiner, and they have not been presented by an appellant for review. [1].
Examiner Note:
1. In bracket 1, identify each ground of rejection that has not been withdrawn and has not been presented by an appellant for review.
¶ 26.55.02 Disagreement With Statement of the Findings of Patentability on Appeal
The [1] brief(s) does/do not provide a correct statement of the findings of patentability to be reviewed on appeal. [2] The findings of patentability to be reviewed on appeal are as follows: [3].
Examiner Note:
1. In bracket 1, identify the brief or briefs containing the incorrect statement of the findings patentability on appeal.
2. In bracket 2, indicate the area of disagreement and reasons for the disagreement.
3. In bracket 3, set forth the correct statement of the patentability to be reviewed on appeal.
¶ 26.56 Claims Appendix
(8) Claims Appendix
Examiner Note:
Follow form paragraph 26.56 with form paragraphs 26.56.01, 26.56.02, and/or 26.56.03, as is appropriate.
¶ 26.56.01 Copy of the Appealed Claims in the Appendix of Appellant Brief is Correct
The copy of the appealed claims [1] is contained in the Appendix to the appellant brief of [2] is correct.
Examiner Note:
1. In bracket 1, identify the claims appealed found in the appellant brief.
2. In bracket 2, identify the appellant brief containing the claims appealed. For example, "third party requester," "third party requester Smith" or "patent owner" can be used where appropriate.
3. This paragraph is for appellant briefs; not for respondent briefs.
4. Where there is more than one appellant brief, the patent examiner may choose any appellant brief that has a correct copy of claims appealed. The examiner may use this form paragraph more than once, as needed to set forth each claim or group of claims appealed by the appellants. Where a claim is correct in one appellant brief but is incorrect in another appellant brief, the examiner will draw a diagonal line in pencil through the incorrect claim in the Appendix of the incorrect appellant brief, and place the date, the word "Incorrect," and the examiner’s initials in the margin.
¶ 26.56.02 Copy of the Appealed Claims in the Appendix of Appellant Brief is Substantially Correct
A substantially correct copy of the appealed claim(s) is contained in the Appendix of the appellant brief of [1]. Claim(s) [2] appear on pages [3] of the appendix contain minor errors. The minor errors are as follows: [4]
Examiner Note:
1. Use this paragraph where all appellant briefs contain errors in the claim(s) but at least one appellant brief is substantially correct and contains only minor errors.
2. In bracket 1, identify the appellant brief containing the substantially correct copy of the appealed claims. For example, "third party requester Smith" or "patent owner" can be used where appropriate.
3. In bracket 2, indicate the claim or claims with the minor errors.
4. In bracket 3, identify the page(s) in the Appendix where the substantially correct appealed claims appear.
5. In bracket 4, indicate the nature of the errors.
6. This paragraph is for appellant briefs; not for respondent briefs.
7. Where there is more than one appellant brief having the same claim recited incorrectly but at least one appellant brief is substantially correct and contains only minor errors, the examiner can apply the present form paragraph to the brief that has only minor errors in the appealed claim. If the application is still a paper file, the examiner should draw a diagonal line in pencil through the incorrect claim in any other (incorrect) appellant brief, and place the date, the word "Incorrect," and the examiner’s initials in the margin.
¶ 26.56.03 Copy of the Appealed Claims in the Appendix Contains Substantial Errors
Claim(s) [1] contain(s) substantial errors as presented in the Appendix to all the appellant briefs. Accordingly, claim(s) [2] is/are correctly written in the Appendix to the examiner’s answer.
Examiner Note:
1. This form paragraph is used where all appellants fail to include a correct copy of an appealed claim or claims in the Appendix to the brief.
2. Attach a correct copy of the claims incorrect in all the appellant briefs as an Appendix to the examiner’s answer; and if the application is still a paper file, draw a diagonal line in pencil through the incorrect claim in the Appendix of each appellant’s appeal brief, and place the date, the word "Incorrect," and the examiner’s initials in the margin.
3. In brackets 1 and 2, identify the claims that contain substantial errors.
4. Rather than using this form paragraph, if the errors in the claim(s) are significant, appellant(s) should be required to submit a corrected brief (amended brief). Where the brief includes arguments based upon the incorrect version of the claims (i.e., argument directed toward the errors in the claims), a corrected brief should always be required.
¶ 26.57 Evidence Relied Upon - Heading
(9) Evidence Relied Upon
Examiner Note:
Follow form paragraph 26.57 with one or more of form paragraphs 26.57.01 - 26.57.03.
¶ 26.57.01 No Evidence Relied Upon in the Examiner’s Answer
No evidence is relied upon by the examiner in this appeal.
¶ 26.57.02 Listing of the Evidence Relied Upon by Examiner
The following is a listing of the evidence (e.g., patents, publications, official notice, and admitted prior art) relied upon by the examiner in the rejection of claims under appeal.
Examiner Note:
1. Use the following format for providing information on each reference cited:
Number Name Date
2. The following are example formats for listing reference citations:
2,717,847 VARIAN 9-1955
1,345,890 MUTHER (Fed. Rep. of Germany) 7-1963
(Figure 2 labeled as Prior Art in this document)
3. See MPEP § 707.05(e) for additional examples.
¶ 26.57.03 Listing of the Art of Record Relied Upon by Requester
The following is a listing of the evidence relied upon by the third party requester(s) in the proposed rejection of claims which were not made by the examiner, and are now under appeal.
Examiner Note:
1. Use the following format for providing information on each reference cited:
Number Name Date
2. The following are example formats for listing reference citations:
2,717,847 VARIAN 9-1955
1,345,890 MUTHER (Fed. Rep. of Germany) 7-1963
(Figure 2 labeled as Prior Art in this document)
3. See MPEP § 707.05(e) for additional examples.
¶ 26.59 Grounds of Rejection
(10) Grounds of rejection
The following ground(s) of rejection are applicable to the appealed claims. [1].
Examiner Note:
In bracket 1, explain each ground of rejection clearly and completely as set forth in the appropriate paragraphs i-vi below:
(i) For each rejection under 35 U.S.C. 112, first paragraph, the examiner’s answer shall explain why the first paragraph of 35 U.S.C. 112 is not complied with, including, as appropriate, how the specification and drawings, if any, (a) do not describe the subject matter defined by each of the rejected claims, and/or (b) would not enable a person skilled in the art to make and use the subject matter defined by each of the rejected claims without undue experimentation including a consideration of the undue experimentation factors set forth in MPEP § 2164.01(a).
(ii) For each rejection under 35 U.S.C. 112, second paragraph, the examiner’s answer shall explain why the claims do not particularly point out and distinctly claim the subject matter which "applicant" regards as the invention.
(iii) For each rejection under 35 U.S.C. 102, the examiner’s answer shall explain why the rejected claims are anticipated or not patentable under 35 U.S.C. 102, pointing out where all of the specific limitations recited in the rejected claims are found in the art relied upon in the rejection.
(iv) For each rejection under 35 U.S.C. 103, the examiner’s answer shall state the ground of rejection and point out where each of the specific limitations recited in the rejected claims is found in the prior art relied on in the rejection, shall identify any difference between the rejected claims and the prior art relied on (i.e., the primary reference) and shall explain why it would have been obvious at the time the invention was made to a person of ordinary skill in the art to have modified the primary reference to arrive at the claimed subject matter.
(v) For each rejection under 35 U.S.C. 102 or 103 where there may be questions as to how limitations in the claims correspond to features in the prior art, the examiner, in addition to the requirements of (iii) and (iv) above, shall compare at least one of the rejected claims feature-by-feature with the prior art relied upon in the rejection. The comparison shall align the language of the claim side-by-side with a reference to the specific page or column, line number, drawing reference number and quotation from the reference, as appropriate.
(vi) For each rejection, other than those referred to in paragraphs (i) to (v) of this section, the examiner’s answer shall specifically explain the basis for the particular rejection.
¶ 26.59.01 Findings of Patentability
(11) Findings of Patentability
The following findings of patentability, i.e., determinations of inapplicability of a proposed rejection, are applicable to the appealed claims.
[1]
Examiner Note:
In bracket 1, explain each determination of inapplicability of a proposed rejection, or refer to the RAN if it clearly and completely sets forth the determination of inapplicability of a proposed rejection and complies with appropriate paragraphs i-vi below:
(i) For each determination of inapplicability of a proposed rejection of the appealed claims under 35 U.S.C. 112, first paragraph; the examiner’s answer shall explain how the first paragraph of 35 U.S.C. 112 is complied with, including, as appropriate, how the specification and drawings, if any, (a) do describe the subject matter defined by each of the claims proposed for rejection, and/or (b) would in fact enable any person skilled in the art to make and use the subject matter defined by each of the claims proposed for rejection without undue experimentation.
(ii) For each determination of inapplicability of a proposed rejection of the appealed claims under 35 U.S.C. 112, second paragraph; the examiner’s answer shall explain how the claims do particularly point out and distinctly claim the subject matter which "applicant" regards as the invention.
(iii) For each determination of inapplicability of a proposed rejection of the appealed claims under 35 U.S.C. 102; the examiner’s answer shall explain why the claims proposed for rejection are not anticipated and patentable under 35 U.S.C. 102, pointing out which limitations recited in the claims proposed for rejection are not found in the prior art relied upon in the proposed rejection.
(iv) For each determination of inapplicability of a proposed rejection of the appealed claims under 35 U.S.C. 103; the examiner’s answer shall point out which limitations recited in the patentable claims are not found in the prior art relied upon in the proposed rejection, shall identify the difference between the patentable claims and the prior art relied upon by the third party requester and shall explain why the claimed subject matter is patentable over the prior art relied on by the third party requester. If the third party requester’s proposed rejection is based upon a combination of references, the examiner’s answer shall explain the rationale for not making the combination.
(v) For each third party requester proposed rejection under 35 U.S.C. 102 or 103 where there are questions as to how limitations in the claims define over features in the prior art even after the examiner complies with the requirements of (iii) and (iv) above, the examiner shall compare at least one of the claims proposed for rejection feature-by-feature with the prior art relied on in the proposed rejection. The comparison shall align the language of the claim side-by-side with a reference to the specific page or column, line number, drawing reference number, and quotation from the reference, as appropriate.
(vi) For each determination of inapplicability of a proposed rejection, other than those referred to in paragraphs (i) to (v) of this section, the examiner’s answer shall specifically explain why there is insufficient basis for making the particular proposed rejection.
¶ 26.60 No New Ground of Rejection; No New Finding of Patentability
(12) No new ground of rejection; no new finding of patentability
This examiner’s answer does not contain any new ground of rejection. This examiner’s answer does not contain any new finding of patentability (i.e., no new determination of inapplicability of a proposed rejection).
Examiner Note:
An examiner’s answer may not include a new ground of rejection. See 37 CFR 41.69 (b). An examiner’s answer also may not include a new determination not to make a proposed rejection. See 37 CFR 41.69 (c). If a new ground of rejection or new determination not to make a proposed rejection is made, prosecution must be reopened. See 37 CFR 41.69 (d). See also MPEP § 2677.
¶ 26.61 Response to Argument
(13) Response to argument
Examiner Note:
A statement of whether the examiner disagrees with each of the contentions of appellants and respondents in their briefs with respect to the issues presented, and an explanation of the reasons for disagreement with any such contentions. If any ground of rejection or inapplicability of proposed rejection is not argued and responded to by the appropriate party, the examiner shall point out each claim affected.
¶ 26.61.01 Related Proceeding(s) Appendix
(14) Related Proceeding(s) Appendix
Examiner Note:
Follow form paragraph with either form paragraph 26.62.01 or 26.62.02.
¶ 26.61.02 No Related Proceeding Identified
No decision rendered by a court or the Board is identified by the examiner in the Related Appeals and Interferences section of this examiner’s answer.
¶ 26.61.03 Copies Related to Proceeding
Copies of the court or Board decision(s) identified in the Related Appeals and Interferences section of this examiner’s answer are provided herein.
¶ 26.62 Notification Regarding Rebuttal Brief
(15) Period for providing a Rebuttal Brief
Appellant(s) is/are given a period of ONE MONTH from the mailing date of this examiner’s answer within which to file a rebuttal brief in response to the examiner’s answer. Prosecution otherwise remains closed.
The rebuttal brief of the patent owner may be directed to the examiner’s answer and/or any respondent brief. The rebuttal brief of the third party requester(s) may be directed to the examiner’s answer and/or the respondent brief of the patent owner. The rebuttal brief must (1) clearly identify each issue, and (2) point out where the issue was raised in the examiner’s answer and/or in the respondent brief. In addition, the rebuttal brief must be limited to issues raised in the examiner’s answer or in the respondent brief.
The time for filing the rebuttal brief may not be extended. No further submission (other than the rebuttal brief(s)) will be considered, and any such submission will be treated in accordance with 37 CFR 1.939.
¶ 26.63 Request to Present Oral Arguments
The examiner requests the opportunity to present arguments at the oral hearing.
Examiner Note:
1. Use this form paragraph only if:
a. an oral hearing has been requested by a party to the appeal; and
b. the primary examiner intends to present an oral argument.
2. This form paragraph must be included as a separate letter on a form PTOL-90. See MPEP § 1209.
¶ 26.64 Examiner’s Answer, Conclusion
(16) Conclusion
For the above reasons, it is believed that the rejections and/or findings of patentability discussed above should be sustained.
Respectfully submitted,
¶ 26.65 Acknowledgment of Rebuttal Brief
The rebuttal brief filed [1] by [2] has been entered.
Examiner Note:
1. Use a separate form paragraph 26.65 for each rebuttal brief that is received.
2. In bracket 1, insert the date the rebuttal brief was filed.
3. In bracket 2, insert the party that filed the rebuttal brief.
¶ 26.65.01 No Further Response
No further response by the examiner is appropriate. Any further reply/comments by any party will be not be considered, and may be returned to the party that submitted it. The reexamination proceeding is being forwarded to the Board of Patent Appeals and Interferences for decision on the appeal(s).
¶ 26.66 Defective Rebuttal Brief-Opportunity to Correct
A rebuttal brief must (1) clearly identify each issue and (2) point out where the issue was raised in the examiner’s answer and/or in the respondent brief. In addition, the rebuttal brief must be limited to issues raised in the examiner’s answer or in the respondent brief. The rebuttal brief of Appellant [1] is defective because [2].
Appellant [3] is given a period of ONE MONTH from the mailing date of this examiner’s answer within which to file an amended rebuttal brief in response to this letter. Prosecution otherwise remains closed. The time for filing the amended rebuttal brief may not be extended.
If the amended rebuttal brief filed in response to the this letter does not remedy the defect or raises a new one, appellant will be so notified, but will not be given a second opportunity to file an amended rebuttal brief.
Examiner Note:
1. In brackets 1 and 3, insert the "patent owner" or the appropriate third party requester. Where there is one third party requester (the usual situation) insert "third party requester" ; where there are two or more third party requesters (a merged proceeding), insert "third party requester" followed by the name of the third party requester (e.g., "third party requester Smith" or "third party requester XYZ Corporation" ).
2. This form paragraph is to be used once for each appellant filing a defective original rebuttal brief, to provide notification thereof.
3. For an appellant filing a defective amended rebuttal brief, use form paragraph 26.66.01.
¶ 26.66.01 Defective Amended Rebuttal Brief-No Opportunity to Correct
A rebuttal brief must (1) clearly identify each issue and (2) point out where the issue was raised in the examiner’s answer and/or in the respondent brief. In addition, the rebuttal brief must be limited to issues raised in the examiner’s answer or in the respondent brief. The amended rebuttal brief of Appellant [1] is defective because [2].
The original and amended rebuttal briefs have been placed in the file but will not be considered. There is no opportunity to file a second amended rebuttal brief, and any such submission will be returned.
Examiner Note:
1. In bracket 1, insert the "patent owner" or the appropriate third party requester. Where there is one third party requester (the usual situation) insert "third party requester" ; where there are two or more third party requesters (a merged proceeding), insert "third party requester" followed by the name of the requester (e.g., "third party requester Smith" or "third party requester XYZ Corporation" ).
2. This form paragraph is to be used once for each defective amended rebuttal brief, to provide notification thereof. The notification letter should conclude with form paragraph 26.66.02, unless such is inappropriate for some reason.
3. For an appellant filing a defective original rebuttal brief, use form paragraph 26.66.
¶ 26.66.02 Forward to the Board for Decision
The reexamination proceeding is being forwarded to the Board of Patent Appeals and Interferences for decision on the appeal(s).
¶ 26.67 No Receipt of Rebuttal Brief(s)
Appellant(s) was given a period of one month from the 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 of Patent Appeals and Interferences 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 of Patent Appeals and Interferences 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 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
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.
¶ 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, Schor et al).
3. In bracket 3, insert the decision (e.g., ABC Corp. v. Kery Fries, 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).