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2244    Prior Art on Which the Determination Is Based

MPEP SECTION SUMMARY

The determination whether or not “a substantial new question of patentability” is present can be based upon any prior art patents or printed publications. The determination on a request will be made “with or without consideration of other patents or printed publications,” i.e., other than those relied upon in the request.

The examiner is not limited in making the determination based on the patents and printed publications relied on in the request. The examiner can find “a substantial new question of patentability” based upon the prior art patents or printed publications relied on in the request, a combination of the prior art relied on in the request and other prior art found elsewhere, or based entirely on different patents or printed publications.




2246    Decision Ordering Reexamination

MPEP SECTION SUMMARY

If a request for reexamination is granted, the examiner’s decision granting the request will conclude that a substantial new question of patentability has been raised by identifying all claims and issues, identifying the patents and/or printed publications relied on, and providing a brief statement of the rationale supporting each new question. In addition, this section covers what the decision for each substantial new question of patentability should point out.

 

35 U.S.C. 304 Reexamination order by Director.

If, in a determination made under the provisions of subsection 303(a), the Director finds that a substantial new question of patentability affecting any claim of a patent is raised, the determination will include an order for reexamination of the patent for resolution of the question. The patent owner will be given a reasonable period, not less than two months from the date a copy of the determination is given or mailed to him, within which he may file a statement on such question, including any amendment to his patent and new claim or claims he may wish to propose, for consideration in the reexamination. If the patent owner files such a statement, he promptly will serve a copy of it on the person who has requested reexamination under the provisions of section 302. Within a period of two months from the date of service, that person may file and have considered in the reexamination a reply to any statement filed by the patent owner. That person promptly will serve on the patent owner a copy of any reply filed.

37 C.F.R. 1.525 Order for ex parte reexamination.

(a) If a substantial new question of patentability is found pursuant to § 1.515 or § 1.520, the determination will include an order for ex parte reexamination of the patent for resolution of the question. If the order for ex parte reexamination resulted from a petition pursuant to § 1.515(c), the ex parte reexamination will ordinarily be conducted by an examiner other than the examiner responsible for the initial determination under § 1.515(a).
(b) The notice published in the Official Gazette under § 1.11(c) will be considered to be constructive notice and ex parte reexamination will proceed.

As to each substantial new question of patentability identified in the decision, the decision should point out:

  • The prior art patents and printed publications which add some new teaching as to at least one claim;
  • What that new teaching is;
  • The claims that the new teaching is directed to;
  • That the new teaching was not previously considered nor addressed in the earlier concluded examination or review of the patent or a final holding of invalidity by a federal court, and was not raised to or by the Office in a pending reexamination or supplemental examination of the patent;
  • That the new teaching is such that a reasonable examiner would consider the new teaching to be important in deciding to allow the claim being considered; and
  • Where the question is raised, or where it is not clear that a patent or printed publication pre-dates the patent claims, a discussion should be provided as to why the patent or printed publication is deemed to be available against the patent claims.

 

» 2248 Petition From Denial of Request