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2647 Decision Denying Reexamination [R-5] - 2600 Optional Inter Partes Reexamination
2647 Decision Denying Reexamination [R-5]
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 New Question of Patentability
No substantial new question of patentability is raised by the present request for inter partes reexamination and the prior art cited therein for the reasons set forth below.
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 Special Program Examiner (SPRE) of his/her intent to issue an order denying reexamination. The SPRE 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.<
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