2287 Conclusion of Ex Parte Reexamination Proceeding
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Section Frequency Chart
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The following example will serve to illustrate this point.
In a reexamination proceeding, claims 5-10 are allowed by the examiner, and claims 1-4 are rejected. The rejection of claims 1-4 is then appealed to the Board. The Board reverses the rejection of claims 1-4 and imposes a new ground of rejection of claims 1-4 under 37 CFR 41.50(b). The patent owner then elects further prosecution before the examiner pursuant to 37 CFR 41.50(b)(1) and submits an amended set of claims 1-4. The examiner finds amended claims 1-4 to be allowable and wishes to “allow” the entire case by issuing a NIRC. A panel review conference must be held at this stage of the proceeding. The conferees will review the allowance of amended claims 1-4. The conferees will not, however, review the allowance of claims 5-10, because claims 5-10 were in the case, and before the Board at the time the Board decided the appeal.
A panel review conference is not to be held where the proceeding is to be concluded by the cancellation of all claims.
A panel review conference must be held in each instance where a NIRC is about to be issued, unless the NIRC is being issued:
- following and consistent with a decision by the Board (or court) on the merits of the proceeding; or
- as a consequence of the patent owner’s failure to respond or take other action where such a response or action is necessary to maintain pendency of the proceeding and, as a result of which failure to respond, all of the claims will be canceled.
If all of the claims are disclaimed in a patent under reexamination, a certificate will be issued indicating that fact.
I. PREPARATION OF THE CASE FOR PUBLICATION
In preparing the reexamination file for publication of the certificate, the examiner must review the reexamination and patent files (IFW and paper files) to be sure that all the appropriate parts are completed.
II. REEXAMINATION PROCEEDINGS IN WHICH ALL THE CLAIMS ARE CANCELED
There will be instances where all claims in the reexamination proceeding are to be canceled, and a NIRC will be issued indicating that fact.
This would occur where the patent owner fails to timely respond to an Office action, and all live claims in the reexamination proceeding are under rejection.
It would also occur where all live claims in the reexamination proceeding are to be canceled as a result of a Board decision affirming the examiner, and the time for appeal to the court and for requesting reconsideration or modification has expired.
V. EXAMINER’S AMENDMENT
Where it is necessary to amend the patent in order to place the proceeding in condition to issuance of a reexamination certificate, the examiner may request that the patent owner provide the amendment(s), or the examiner may make the amendments, with the patent owner’s approval, by an examiner’s amendment.
2287.01 Examiner Consideration of Submissions After a NIRC
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