2287 Conclusion of Ex Parte Reexamination Proceeding [R-01.2024]

Upon conclusion of the ex parte reexamination proceeding, the examiner must prepare a “Notice of Intent to Issue Ex Parte Reexamination Certificate” (NIRC) by completing form PTOL-469. If appropriate, an examiner’s amendment will also be prepared. Where claims are found patentable, reasons must be given for each claim found patentable. See the discussion as to preparation of an examiner’s amendment and reasons for allowance at the end of this section. In addition, the examiner must prepare the reexamination file so that the Office of Data Management can prepare and issue a certificate in accordance with 35 U.S.C. 307 and 37 CFR 1.570 setting forth the results of the reexamination proceeding and the content of the patent following the proceeding. See MPEP § 2288.

The examiner will so inform the examiner's Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) or Technology Center (TC) Quality Assurance Specialist (QAS) of the conclusion of the reexamination proceeding. The CRU SPRS/TC QAS will convene a panel review conference (see MPEP § 2271.01), and the conference members will review the patentability of the claim(s). If the conference confirms the examiner’s decision, a NIRC shall be issued and signed by the examiner, with the two, or more, other conferees initialing the NIRC (as “conferee”) to indicate their participation in the conference. All conferees will initial, even though one of them may have dissented from the conference decision on the patentability of the claim(s). If the conference does not confirm the patentability of the claim(s), the examiner will reevaluate and issue an appropriate Office action rejecting the claim(s), not confirmed as patentable.

A panel review conference is not to be held as to any claim that was in the case (proceeding) at the time the case was reviewed by the Board or a federal court. 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. No panel review conference is needed in this instance, as the issuance of the NIRC is essentially ministerial.

Thus, a panel review conference must be held in each instance where a NIRC is about to be issued, unless the NIRC is being issued: (A) following and consistent with a decision by the Board (or court) on the merits of the proceeding; or (B) 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.

A NIRC informs the patent owner and any third party requester that the reexamination prosecution has been terminated. The rules do not provide for an amendment to be filed in a reexamination proceeding after prosecution has been terminated. The provisions of 37 CFR 1.312 do not apply in reexamination. Any amendment, information disclosure statement, or other paper related to the merits of the reexamination proceeding filed after prosecution has been terminated must be accompanied by a petition under 37 CFR 1.182 to have the amendment, information disclosure statement, or other paper considered.

If all of the claims are disclaimed in a patent under reexamination, a certificate under 37 CFR 1.570 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. The review should include completion of the following items:

• (A) The IFW file wrapper Search Notes form — The “SEARCHED” and the “SEARCH NOTES” boxes are to be filled in with the classes and subclasses that were actually searched and other areas consulted. See MPEP § 719.05.
• (B) The IFW file jacket form — Check to be sure that the necessary data is included thereon, such as the certificate number, e.g., “C1” or “C2”. The “Litigation Review” and “Copending Office Proceedings” boxes should be completed to ensure that the Office is aware of prior or concurrent litigation and Office proceedings.
• (C) The Bibliographic Data Sheet — Check to be sure that the data included thereon is correct and the blank spaces have been initialed.
• (D) The Issue Classification IFW form — The form must be completed to set forth the status of each claim and the final claim numbers. The appropriate information must be included in the “Issue Classification” boxes. The examiner should enter the classification in the Issue Classification boxes that corresponds to the current classification of the patent and any additional classification based on newly claimed subject matter. See MPEP § 903.07. The current classification of the patent may be found by viewing the patent in PE2E SEARCH, the automated search tool. See MPEP § 902.03(e). Completion of the Issue Classification boxes is required, even if all of the claims are canceled.

  An appropriate drawing figure is to be indicated for printing on the certificate cover sheet and in the Official Gazette. In addition, a representative claim which has been reexamined is to be indicated for publication in the Official Gazette. The claim or claims for the Official Gazette should be selected in accordance with the following instructions:

• (A) The broadest claim should be selected;
• (B) Examiners should ordinarily designate but one claim on each invention, although when a plurality of inventions are claimed in one application, additional claims up to a maximum of five may be designated for publication. In the case of reexamination, the examiner must select only one claim;
• (C) A dependent claim should not be selected unless the independent claim from which it depends is also printed. In the case where a multiple dependent claim is selected, the entire chain of claims for one embodiment should be listed. In the case of reexamination, a dependent patent claim may be selected where the independent original patent claim has been canceled; in such a case, the dependent claim would be printed while the independent claim would not be printed; and
• (D) In reissue applications, the broadest claim with changes or the broadest additional reissue claim should be selected for printing.

When recording this information in the box provided, the following items should be kept in mind:

• (A) Enter the claim number clearly;
• (B) If multiple claims are selected, the claim numbers should be separated by commas; and
• (C) The claim designated must be referred to by using the renumbered patent claim number rather than the original claim number if different.

If the patent owner desires the names of the attorneys or agents, or law firm, to be printed on the certificate, a separate paper limited to this issue which lists the names and positively states that they should be printed on the certificate must be filed. A mere power of attorney or change of address is not a request that the name appear on the certificate.

The examiner must also complete a checklist, form PTO-1516, for the reexamination file which will be forwarded to the Office of Data Management identifying information used in printing the reexamination certificate. A copy of this form may be obtained from the CRU SPRS or TC QAS or their support staff.

The examiner should inspect the title report, or patent abstract of title, in the file. If the title report, or patent abstract of title, indicates a title in the inventors, but the patent copy shows an assignment to an assignee, a telephone call can be made to the patent owner, and the patent owner can be asked to submit a statement under 37 CFR 3.73 indicating that title is in the assignee (i.e., it has not reverted back to the inventors). If communication could not be made via telephone, the examiner could also use email (if authorized by the patent owner) to contact the patent owner. See MPEP § 320.

After the examiner has prepared the NIRC and attachments for mailing, completed the review and preparation of the case as discussed above, and completed the Examiner Checklist form PTOL-1516, the reexamination and patent files will be given to the CRU support staff. The CRU support staff will complete the Reexamination Clerk Checklist form PTO-1517. The CRU support staff will revise and update the files. The clerk should check to see if any changes in especially:

• (A) the title;
• (B) the inventor;
• (C) the assignee;
• (D) the continuing data;
• (E) the foreign priority;
• (F) the address of the owner’s attorney; and
• (G) the requester’s address

have been properly entered in the reexamination and patent files (in the file history of an IFW file and on the face of a paper file) and properly entered in the Patent Data Portal database. After the clerk has finished the processing, the clerk will forward the reexamination proceeding to the CRU SPRS or TC QAS for review. After approval by the CRU SPRS or TC QAS, the CRU support staff will process the NIRC with attachments for mailing.

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.

Prior to canceling the claims and issuing the NIRC, the examiner should telephone the patent owner to inquire if a timely response, timely appeal, etc., was filed with the Office so as to make certain that a timely response has not been misdirected within the Office. If communication could not be made via telephone, the examiner could also use email (if authorized by the patent owner) to contact the patent owner. Where the patent owner indicates that no such filing was made, or where the patent owner cannot be reached, the examiner will proceed to issue a NIRC terminating prosecution.

A panel review conference is not to be held, because the proceeding is to be concluded by the cancellation of all claims. Rather, the examiner will issue a NIRC action, and as an attachment to the NIRC, the examiner will draft an examiner’s amendment canceling all live claims in the reexamination proceeding. In the examiner’s amendment, the examiner should point out why the claims have been canceled. For example, the examiner might make one of the two following statements, as appropriate:

“Claims 1-5 and 6-8 (all live claims in the proceeding) were subject to rejection in the last Office action mailed 9/9/99. Patent owner failed to timely respond to that Office action. Accordingly claims 1-5 and 6-8 have been canceled. See 37 CFR 1.550(d) and MPEP § 2266.”

“The rejection of claims 1-5 and 6-8 (all live claims in the proceeding) has been affirmed in the Board decision of 9/9/99, and no timely appeal to the court has been filed. Accordingly claims 1-5 and 6-8 have been canceled.”

If the patent owner was contacted and indicated that there was no timely filing (as discussed above), the attachment to the NIRC will make the telephone interview of record.

The examiner will designate a cancelled original patent claim, to be printed in the Official Gazette, on the Issue Classification IFW form in the appropriate place for the claim chosen.

III. HANDLING OF MULTIPLE DEPENDENT CLAIMS

The following discussion provides guidance on how to treat multiple dependent claims when preparing a reexamination proceeding for publication of the reexamination certificate.

Assume Patent X issues with the following claims:

Patent claims:

• 1. A method of sintering a particulate ceramic preform, comprising heating it above 500 degrees F, cooling it to 100 degrees F, and repeating the heating and cooling steps six times.
• 2. The method of claim 1, where a pressure of 300 - 400 psi is applied during the heating steps.
• 3. The method of claim 1 or claim 2, where the pressure applied during the heating steps is 350 - 375 psi.
• 4. The method of claim 3, where the pressure applied during the heating steps is 360 - 365 psi.
• 5. The method of claim 1, where the preform contains lithium and magnesium oxides.
• 6. The method of claim 5, where the preform contains sodium fluoride.
• 7. The method of claim 1 or claim 5, where the sintered preform is machined into a lens.

A reexamination request is then filed for Patent X, and at the point when the claims are ready for issuance of the certificate, the following claims are present in the reexamination file.

In reexamination:

• 1. (Text Unchanged) A method of sintering a particulate ceramic preform, comprising heating it above 500 degrees F, cooling it to 100 degrees F, and repeating the heating and cooling steps six times.
• 2. (Amended) The method of claim 1 or claim 8, where a pressure of 300 - 400 psi is applied during the heating steps.
• 3. (Amended) The method of [claim 1 or] claim 2, where the pressure applied during the heating steps is 350 - 375 psi.
• 4. (Amended) The method of claim 3 or claim 8, where the pressure applied during the heating steps is 355[360] - 365 psi.
• 5. (Text Unchanged) The method of claim 1, where the preform contains lithium and magnesium oxides.
• 6. (Amended) The method of claim 8[5], where the preform contains sodium fluoride.
• 7. (Text Unchanged) The method of claim 1 or claim 5, where the sintered preform is machined into a lens.
• 8. (New) A method of sintering a particulate fluoride ceramic preform comprising heating it above 500 degrees F, cooling it to 100 degrees F, and repeating the heating and cooling steps six times.

The status of the claims would be set forth as follows:

Part 1(h) of the Notice of Intent to Issue Ex Parte Reexamination Certificate Form PTOL-469 (NIRC) would be completed as follows.

Patent claims confirmed: 1, 2/1, 5, 7

Patent claims amended: 3, 4/3

Patent claims canceled: 3/1, 6/5

New claims patentable: 2/8, 4/8, 6/8, 8

The parts of the Examiner’s checklist (Form PTO-1516) directed to the status of the claims would be completed as follows.

7. Patent claims confirmed: 1, 5, 7

11. Patent claims canceled: None

12. Patent claims amended: 2, 3, 4 and 6

13. Patent claims dependent on amended: None

14. New claims patentable: 8

Looking at claim 2:

For the purpose of the NIRC, the addition of a claim of the multiple dependency is viewed as adding a new claim for which protection is now to be provided. Thus, prior to reexamination, only the subject matter of claim 2/1 was protected. As a result of reexamination, claim 2/8 has been added, and its subject matter is now protected. Thus, claim 2/8 is designated as a new claim. Claim 2/1 has not changed as to its content and its scope of protection, and is designated as a confirmed claim.

For the purpose of the Examiner’s checklist, the addition or deletion of a claim of the multiple dependency is viewed simply as amending the claim, because of the way claims are printed on the certificate. Thus, claim 2 is designated as an amended claim and is simply printed on the certificate in its amended form as:

2. The method of claim 1 or claim 8, where the sintered preform is machined into a lens.

Looking at claim 3:

For the purpose of the NIRC, the deletion of a claim of the multiple dependency is viewed as canceling the claim deleted, and protection is no longer provided for the claim as dependent from the deleted claim. Thus, prior to reexamination, the subject matter of claims 3/1 and 3/2 was protected. As a result of reexamination, claim 3/1 has been deleted, and its subject matter is no longer protected. Thus, claim 3/1 is designated as a canceled claim. Claim 3/2 has not changed as to its content and its scope of protection, and is designated as a confirmed claim.

For the purpose of the Examiner’s checklist, the addition or deletion of a claim of the multiple dependency is viewed simply as amending the claim, because of the way claims are printed on the certificate. Thus, claim 3 is designated as an amended claim and is simply printed on the certificate in its amended form as:

3. The method of [claim 1 or] claim 2, where the pressure applied during the heating steps is 350 - 375 psi.

Looking at claim 4:

For the purpose of the NIRC, the addition of a claim of the multiple dependency is viewed as adding a new claim for which protection is now to be provided. Thus, prior to reexamination, only the subject matter of claim 4/3 was protected. As a result of reexamination, claim 4/8 has been added, and its subject matter is now protected. Thus, claim 4/8 is designated as a new claim. Claim 4/3 has changed as to its content and its scope of protection due to the expanding of the pressure range from 360 - 365 psi to 355 - 365 psi, and claim 4/3 is designated as an amended claim.

For the purpose of the Examiner’s checklist, the addition or deletion of a claim of the multiple dependency is viewed simply as amending the claim, because of the way claims are printed on the certificate. Thus, claim 4 is designated as an amended claim and simply printed on the certificate in its amended form as:

4. (Amended) The method of claim 3 or claim 8, where the pressure applied during the heating steps is 355 [360] - 365 psi.

Looking at claim 6:

For the purpose of the NIRC, prior to reexamination, the subject matter of claim 6/5 was protected and claim 6/8 did not exist. As a result of reexamination, claim 6/5 has been deleted and claim 6/8 has been added. Thus, claim 6/5 is designated as a canceled claim, and claim 6/8 is designated as a new claim.

For the Examiner’s checklist, claim 6 is designated as an amended claim and is simply printed on the certificate in its amended form as:

6. (Amended) The method of claim 8 [5], where the preform contains sodium fluoride.

Looking at claim 7:

It is unchanged as to its text. Claim 7 remains dependent on claim 1 or claim 5, as it did prior to reexamination. Thus, both claims 7/1 and 7/5 are confirmed. Claims 7/1 and 7/5 are listed in the “Confirmed” part of the NIRC. They are not listed separately, but rather simply as “7.” This is because the entirety of claim 7 has been confirmed.

As to the Examiner’s checklist, claim 7, being unchanged as to its text and not being dependent on an amended claim, is simply listed in the “Confirmed” part of the checklist. Claim 7 will not be printed on the certificate, but will simply be listed as one of the confirmed claims.

IV. REEXAMINATION REMINDERS

The following items deserve special attention. The examiner should ensure they have been correctly completed or followed before forwarding for processing of the NIRC.

• (A) All patent claims for which a substantial new question of patentability has been found must have been examined. See MPEP § 2243.
• (B) No renumbering of patent claims is permitted. New claims may require renumbering. See MPEP § 2250.
• (C) All amendments to the description and claims must conform to requirements of 37 CFR 1.530(d)-(j). This includes any changes made by Examiner’s Amendment. If a portion of the text is amended more than once, each amendment should indicate all of the changes (insertions and deletions) in relation to the current text in the patent under reexamination. See MPEP § 2250.
• (D) The prior art must be listed on a form PTO 892, PTO/SB/08, or PTO/SB/42 (or on a form having a format equivalent to one of these forms). These forms must be properly completed. See MPEP § 2257.
• (E) The examiner and reexamination clerk checklists PTO-1516 and PTO-1517 must be entirely and properly completed. A careful reading of the instructions contained in these checklists is essential. The clerical checklist is designed as a check and review of the examiner’s responses on the examiner checklist. Accordingly, the CRU support staff should personally review the file before completing an item. The CRU support staff should check to make certain that the responses to all related items on both checklists are in agreement.
• (F) Multiple pending reexamination proceedings are often merged. See MPEP § 2283.
• (G) Where the reexamination proceeding is copending with an application for reissue of the patent being reexamined, the files must have been forwarded to the Office of Patent Legal Administration (OPLA) for a consideration of potential merger, with a decision (by a Senior Legal Advisor) on the question being present in the reexamination file. See MPEP § 2285.
• (H) Reasons for patentability and/or confirmation are required for each claim found patentable. See below.
• (I) There is no issue fee in reexamination. See MPEP § 2233.
• (J) The patent claims may not be amended nor new claims added after expiration of the patent. See MPEP § 2250.
• (K) Original drawings cannot be physically changed. “Amended” or “New” figures must be appropriately labeled as such and presented on new sheets in compliance with 37 CFR 1.84. See 37 CFR 1.530(d)(3) and MPEP § 2250.01.
• (L) An amended or new claim may not enlarge the scope of the patent claims. See MPEP § 2250.
• (M) If the patent has expired, all amendments to the patent claims and all claims added during the proceeding must be withdrawn. Further, all presently rejected and objected-to claims are canceled by examiner’s amendment. See MPEP § 2250, subsection III, Amendment after the Patent 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. If the changes are made by an examiner’s amendment, the examiner’s amendment must comply with the requirements of 37 CFR 1.530(d)-(j) in amending the patent. Thus, the examiner’s amendment requires presentation of the full text of any paragraph or claim to be changed, with the 37 CFR 1.530(f) markings. The exception for examiner’s amendments set forth in 37 CFR 1.121(g) does not apply to examiner’s amendments in reexamination proceedings. See MPEP § 2250. The only exception to the full text presentation requirement is that an entire claim or an entire paragraph of specification may be deleted from the patent by a statement deleting the claim or paragraph without the presentation of the text of the claim or paragraph.

Normally the title of the invention or the abstract will not need to be changed during reexamination. If a change to the title or to the abstract is necessary, the patent owner should be notified of the need to provide an amendment changing the title or abstract as early as possible in the prosecution as a part of an Office action. If all of the claims are found to be patentable and a NIRC has been or is to be mailed, the examiner may only change the title of the invention or the text of the abstract by an examiner’s amendment authorized by the patent owner. Changing the title and merely initialing the change is not permitted in reexamination.

If a patent expires during the pendency of a reexamination proceeding for that patent, all amendments to the patent claims and all claims added during the proceeding must be withdrawn. The examiner’s amendment is to include a statement such as:

“As the patent being reexamined has expired during the pendency of the present reexamination proceeding, all amendments made during the proceeding are improper, and are hereby expressly withdrawn.”

Where an examiner’s amendment is prepared, Box 7 of form PTOL-469 (Notice of Intent to Issue Ex Parte Reexamination Certificate) is checked, and form paragraph 22.06 is used to provide the appropriate attachments.

VI. REASONS FOR PATENTABILITY AND/OR CONFIRMATION

Reasons for patentability must be provided, unless all claims are canceled in the proceeding. Box 2 of form PTOL-469 is checked, and the reasons are provided as an attachment. In the attachment to the NIRC, the examiner should indicate why the claims found patentable in the reexamination proceeding are clearly patentable over the cited patents or printed publications. This is done in a manner similar to that used to indicate reasons for allowance in an application. See MPEP § 1302.14. Where the record is clear as to why a claim is patentable, the examiner may refer to the particular portions of the record which clearly establish the patentability of that claim.

The reasons for patentability may be set forth on form PTOL-476, entitled “REASONS FOR PATENTABILITY AND/OR CONFIRMATION.” However, as a preferred alternative to using form PTOL-476, the examiner may instead use form paragraph 22.16.

Original patent claims that are found patentable in a reexamination proceeding are generally to be designated as “confirmed” claims, while new claims and amended patent claims are generally to be designated as “patentable” claims. However, for purposes of the examiner setting forth reasons for patentability or confirmation, the examiner may use “patentable” to refer to any claim that defines over the cited patents or printed publications. There is no need to separate the claims into “confirmed” and “patentable” categories when setting forth the reasons.

Obviously, where all claims are canceled in the proceeding, no reasons for patentability are provided.

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