2647 Decision Denying Reexamination [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 26.02 should be used as the introductory paragraph in a decision denying reexamination.
¶ 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].
The decision denying the request will then indicate, for each patent or publication cited in the request, why the citation:
- (A) Is cumulative to the teachings of the art cited in the earlier concluded examination of the patent;
- (B) Is 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) Would not be important to a reasonable examiner. Even if the citation is available against the claims and it is not cumulative, it still cannot be the basis for a substantial new question of patentability if the additional teaching of the citation would not be important to a reasonable examiner in deciding whether any claim (of the patent for which reexamination is requested) is patentable; or
- (D) Is one which was cited in the record of the patent and is barred by the guidelines set forth in MPEP § 2642, subsection II.A.
The examiner should also, in the decision, respond to the substance of each argument raised by the third party 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 1.906 (c).
See MPEP § 2647.01 for an example of a decision denying a request for inter partes reexamination.
The decision denying the request is mailed by the Central Reexamination Unit (CRU), and jurisdiction over the reexamination proceeding is retained by the 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 § 2671.03 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.
2647.01 Examples of Decisions on Requests [R-7]
Examples of decisions on requests for inter partes reexamination are provided below. The first example is a grant of an inter partes reexamination. The second example is a denial of an inter partes reexamination. The examiner should leave the paper number blank, since IFW files do not have a paper number.
| DECISION GRANTING INTER PARTES REEXAMINATION | |
| A substantial new question of patentability affecting claims 1-3 of United States Patent Number 9,999,999 to Key is raised by the present request for inter partes reexamination. | |
| 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 parties 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)(3). | |
| The patent owner is reminded of the continuing responsibility under 37 CFR 1.985(a), to apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving Patent 9,999,999 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 § 2686 and 2686.04. | |
| The request sets forth that the third party requester considers claims 1-3 of the Key patent to be unpatentable over Smith taken with Jones. | |
| The request further sets forth that the requester considers claim 4 of the Key patent to be 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. Further, the request does not present any other new question of patentability as to claim 4, and none has been found. 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 inter partes reexamination proceeding should be directed: | |
| By Mail to: | Mail Stop Inter Partes Reexam Attn: Central Reexamination Unit United States Patent & Trademark OfficeP.O. Box 1450Alexandria, VA 22313-1450 |
| By FAX to: | (571) 273-9900 Central Reexamination Unit |
| By hand (or delivery service): | 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. | |
| Kenneth M. Schor Kenneth M. Schor Primary Examiner CRU Art Unit 3998 | |
| ARI Conferee | |
| BZ Conferee | |
| DECISION DENYING INTER PARTES REEXAMINATION | |
| No substantial new question of patentability is raised by the present request for inter partes reexamination 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 of the Key patent (Patent # 9,999,999) 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 of the Key patent 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 previously used, in the prosecution of the Key application, to teach the extrusion die. Further, there is no argument in the reexamination request that Jones is being applied in a manner different than it was applied in the prosecution of the Key application. | |
| The Horn publication has been argued to show 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 Horn publication has been argued to show 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 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. | |
| In view of the above, the request for reexamination is DENIED. | |
| All correspondence relating to this inter partes reexamination proceeding should be directed: | |
| By Mail to: | Mail Stop Inter Partes Reexam Attn: Central Reexamination Unit United States Patent & Trademark OfficeP.O. Box 1450Alexandria, VA 22313-1450 |
| By FAX to: | (571) 273-9900 Central Reexamination Unit |
| By hand (or delivery service): | 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. | |
| Kenneth M. Schor Kenneth M. Schor Primary Examiner CRU Art Unit 3998 | |
| ARI Conferee | |
| BZ Conferee | |
2647.02 Processing of Decision [R-7]
After the examiner has prepared the decision (and any Office action to accompany the decision) and signed the typed decision, the case is forwarded to the Central Reexamination Unit (CRU) clerical staff. The clerical staff prepares the decision (and any Office action) for mailing, but does not mail it. See MPEP § 2670.
The clerical staff will make a copy of the decision and any Office action for the patent owner and for the third party requester. The clerical staff will also make any copies of references which are needed. Thus, the clerical staff makes 2 copies of any prior art documents not already supplied by the third party requester, one for the patent owner, and one for the third party requester.
After the case is prepared for mailing, the file will be forwarded to the CRU Supervisory Patent Examiner (SPE) for review. The file and the decision and any Office action are forwarded to the Reexamination Legal Advisor (RLA) for review within nine (9) weeks of the filing date of the request (unless otherwise authorized by the CRU Director or a RLA). The decision (and any Office action) is given a general review by a RLA and (if proper) mailed by the CRU support staff. The CRU support staff prints the heading on the cover page (PTOL-2063) of the decision by using the computer terminal, attaches all parts of the decision, and mails it. Where the first Office action accompanies the decision, the heading is also printed on the cover page (PTOL-2064) of the first Office action, and the first Office action is mailed with the decision.
A transmittal form PTOL-501 with the third party requester’s address will be completed (if a copy for mailing is not already in the case file). The transmittal form PTOL-501 is used to forward copies of Office actions and other communications to the third party requester. Whenever an Office action is issued, a copy of this form will be made and attached to a copy of the Office action. The use of this form removes the need to retype the third party requester’s address each time a mailing is made.
The original signed copy of the decision, the original signed copy of any first Office action accompanying the decision, and a copy of any prior art enclosed are made of record in the reexamination e-file (file history).
Where the decision is a grant of reexamination, the first Office action on the merits will ordinarily be prepared and mailed with the order granting reexamination. See MPEP § 2660.
After the CRU mails the decision, the file will be appropriately annotated, update scanning will be effected, and appropriate PALM entries will be made.