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2256 Prior Art Patents and Printed Publications Reviewed by Examiner in Reexamination [R-5] - 2200 Citation of Prior Art and Ex Parte Reexamination of Patents
2256 Prior Art Patents and Printed Publications Reviewed by Examiner in Reexamination [R-5]
*>Typically, the< primary source of prior art will be the patents and printed publications cited in the request for ex parte reexamination.
*>Subject to the discussion provided below in this section, the< examiner must also consider patents and printed publications:
(A) cited by another reexamination requester under 37 CFR 1.510 or 37 CFR 1.915;
(B) cited in a patent owner's statement under 37 CFR 1.530 or a requester's reply under 37 CFR 1.535 if they comply with 37 CFR 1.98;
(C) cited by the patent owner under a duty of disclosure ( 37 CFR 1.555) in compliance with 37 CFR 1.98;
(D) discovered by the examiner in searching;
(E) of record in the patent file from earlier examination; and
(F) of record in the patent file from any 37 CFR 1.501 submission prior to date of an order if it complies with 37 CFR 1.98. The reexamination file must clearly indicate which prior art patents and printed publications the examiner has considered during the ex parte examination of the reexamination proceeding. >Where patents, publications, and other such items of information are submitted by a party (patent owner or requester) in compliance with the requirements of the rules, the requisite degree of consideration to be given to such information will be normally limited by the degree to which the party filing the information citation has explained the content and relevance of the information. The initials of the examiner placed adjacent to the citations on the form PTO/SB/08A and 08B or its equivalent, without an indication to the contrary in the record, do not signify that the information has been considered by the examiner any further than to the extent noted above. As to (E) above, it is pointed out that, even the degree of consideration of information from the patent file and its parent files is dependent on the availability of the information. Thus, for example, if a reference other than a U.S. patents and U.S. patent publication was discarded at the time the patent was issued and was not scanned into the Image File Wrapper (IFW), then what was said about the reference in the patent's record is the full extent of consideration, unless otherwise indicated. As to the requirement for a copy of every patent or printed publication relied upon or referred to in the request, or submitted under 37 CFR 1.98, this requirement is not currently being enforced to require copies of U.S. patents and U.S. patent publications; and the requirement is deemed waived to that extent. The exception to the requirement for reference copies noted in 37 CFR 1.98(d)(1) does not apply to reexamination proceedings since a reexamination proceeding does not receive 35 U.S.C. 120 benefit from the patent.
AFTER THE NOTICE OF INTENT TO ISSUE EX PARTE REEXAMINATION CERTIFICATE (NIRC):
Once the NIRC has been mailed, the reexamination proceeding must proceed to publication of the Reexamination Certificate as soon as possible. Thus, when the patent owner provides a submission of patents and printed publications, or other information described in 37 CFR 1.98(a), after the NIRC has been mailed, the submission must be accompanied by (A) a factual accounting providing a sufficient explanation of why the information submitted could not have been submitted earlier, and (B) an explanation of the relevance of the information submitted with respect to the claimed invention in the reexamination proceeding. This is provided via a petition under 37 CFR 1.182 (with petition fee) for entry and consideration of the information submitted after NIRC. The requirement in item (B) above is for the purpose of facilitating the Office's compliance with the statutory requirement for "special dispatch," when the requirement in item (A) above is satisfied to provide a basis for interrupting the proceeding after the NIRC.
Once the reexamination has entered the Reexamination Certificate publication process, pulling the proceeding from that process provides an even greater measure of delay. 37 CFR 1.313 states for an application (emphasis added):
"(c) Once the issue fee has been paid, the application will not be withdrawn from issue upon petition by the applicant for any reason except:
(1) Unpatentability of one of more claims, which petition must be accompanied by an unequivocal statement that one or more claims are unpatentable, an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable;"
The publication process for an application occurs after the payment of the issue fee (there is no issue fee in reexamination), and thus 37 CFR 1.313(c) applies during the publication cycle for an application. Based on the statutory requirement for "special dispatch," the requirements for withdrawal of a reexamination proceeding from its publication cycle are at least as burdensome as those set forth in 37 CFR 1.313(b) and (c). Accordingly, where a submission of patents and printed publications, or other information described in 37 CFR 1.98(a), is made while a proceeding is in its publication cycle, the patent owner must provide an unequivocal statement as to why the art submitted makes at least one claim unpatentable, an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable. This is in addition to the above-discussed (A) a factual accounting providing a sufficient explanation of why the information submitted could not have been submitted earlier. The submission of patents and printed publications must be accompanied by a petition under 37 CFR 1.182 (with petition fee) for withdrawal of the reexamination proceeding from the publication process for entry and consideration of the information submitted by patent owner. A grantable petition must provide the requisite showing discussed in this paragraph.
No consideration will be given to a third party requester submission of patents and printed publication, or other information, that is filed in the reexamination proceeding unless it is part of the request for reexamination or the requester's reply under 37 CFR 1.540.<
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