2247 Decision on Request for Reexamination, Request Denied [R-7]
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 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 1-2 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 CRU Supervisory Patent Examiner (SPE) of his/her intent to issue an order denying reexamination. The CRU SPE 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 [R-7]
Examples of decisions on requests for ex parte reexamination 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.
| 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 sets forth that Requester considers that Claims 1 - 3 are unpatentable over Smith taken with Jones. The request further sets forth 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. Accordingly, claim 4 will not be reexamined. | |
| Finally, reexamination has not been requested for claims 5 – 20 of the Key patent. Accordingly, claims 5 – 20 will not be reexamined. | |
| Claims 1 – 3 of the Key patent will be reexamined. | |
| All correspondence relating to this 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 CRU Art Unit 3998 | |
| ARI Conferee | |
| BZ Conferee | |
| 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 CRU Art Unit 3998 | |
| ARI Conferee | |
| BZ Conferee | |