2256 Prior Art Patents and Printed Publications Reviewed by Examiner in Reexamination [R-07.2022]
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.
Where patents, publications, and other such documents 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 document. The initials of the examiner placed adjacent to the citations on the form PTO/SB/08 or its equivalent, without an indication to the contrary in the record, do not signify that the document has been considered by the examiner any further than to the extent noted above.
As to (E) above, it is pointed out that 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, as to a reference other than a U.S. patent and U.S. patent publication that is not scanned into the Image File Wrapper (IFW) what was said about that reference in the patent’s record is the full extent of consideration, unless otherwise indicated, or unless parties appropriately supplied a copy.
As to (B), (C) and (F) above, 37 CFR 1.98(a)(2) requires a legible copy of:
- (1) each foreign patent;
- (2) each publication or that portion which caused it to be listed, other than U.S. patents and U.S. patent application publications unless required by the Office;
- (3) for each cited pending unpublished U.S. application, the application specification including the claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion;
- (4) all other information or that portion which caused it to be listed.
It is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide the application/proceeding number and its status. A submission that is not permitted entry will be returned, expunged, or discarded at the sole discretion of the Office.
The exception to the requirement for reference copies in37 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 is forwarded for publication of the reexamination certificate. 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 proceeding has entered the publication process for printing the reexamination certificate. To automatically delay prosecution by pulling the proceeding from that process when such a submission has been filed, without more, would be contrary to the Office’s statutory mandate for “special dispatch”, as set forth in 35 U.S.C. 305.
For this reason, 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, (B) an unequivocal statement that one or more claims are unpatentable, and (C) an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable. This must be provided via a petition under 37 CFR 1.182 (with the petition fee) for entry and consideration of the information submitted after NIRC. These requirements are necessary to provide a basis for interrupting the proceeding after NIRC, in order for the Office to comply with its statutory mandate for “special dispatch”.
These requirements are similar to the requirements to withdraw an application from issue as set forth in 37 CFR 1.313(c)(1). The printing cycle for an application occurs after the payment of the issue fee (there is no issue fee in reexamination), and thus, in order to withdraw an application from issue after payment of the issue fee, the requirements of 37 CFR 1.313(c) must be met. Based on the statutory requirement for “special dispatch,” the requirements for withdrawal of a reexamination proceeding from issue, i.e., its printing cycle, after NIRC 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 after NIRC, 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 factual accounting providing a sufficient explanation of why the information submitted could not have been submitted earlier (see item (A) above).
No consideration will be given to a third party requester submission of patents and printed publications, 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 1.535. See 37 CFR 1.540.
