Chapter   2200  Citation of Prior Art and Reexamination of Patents
---SECTION---2201 Introduction

Statutory basis for citation of prior patents or printed publications in
patent files and reexamination of patents became available on July 1,
1981, as a result of new sections 301-307 of title 35 United States Code
which were added by Public Law 96-517 enacted on December 12, 1980. The
rules of practice in patent cases relating to reexamination were
initially promulgated on April 30, 1981, at 46 FR 24179-24180 and on May
29, 1981, at 46 FR 29176-29187.

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This chapter is intended to be primarily a guide for Patent and
Trademark Office (Office) personnel on the processing of prior art
citations and reexamination requests. Secondarily, it is to also serve
as a guide on the formal requirements for filing such documents in the
Office.

The flowchart shows the general provisions of both the citation of prior
art and reexamination proceedings, including reference to the pertinent
rule sections.

---SECTION---2202 Citation of Prior Art

35 U.S.C. 301 Citation of prior art.

Any person at any time may cite to the Office in writing prior art
consisting of patents or printed publications which that person believes
to have a bearing on the patentability of any claim of a particular
patent. If the person explains in writing the pertinency and manner of
applying such prior art to at least one claim of the patent, the
citation of such prior art and the explanation thereof will become a
part of the official file of the patent. At the written request of the
person citing the prior art, his or her identity will be excluded from
the patent file and kept confidential.

37 CFR 1.501 Citation of prior art in patent files.

(a) At any time during the period of enforceability of a patent, any
person may cite to the Patent and Trademark Office in writing prior art
consisting of patents or printed publications which that person states
to be pertinent and applicable to the patent and believes to have a
bearing on the patentability of any claim of a particular patent. If the
citation is made by the patent owner, the explanation of pertinency and
applicability may include an explanation of how the claims differ from
the prior art. Citations by the patent owner under Section  1.555 and by
a reexamination requester under either Section  1.510 or Section  1.535
will be entered in the patent file during a reexamination proceeding.
The entry in the patent file of citations submitted after the date of an
order to reexamine pursuant to Section  1.525 by persons other than the
patent owner, or a reexamination requester under either Section  1.510
or Section  1.535, will be delayed until the reexamination proceedings
have been terminated.

(b) If the person making the citation wishes his or her identity to be
excluded from the patent file and kept confidential, the citation papers
must be submitted without any identification of the person making the
submission.

(c) Citation of patents or printed publications by the public in patent
files should either (1) reflect that a copy of the same has been mailed
to the patent owner at the address as provided for in Section  1.33(c);
or in the event service is not possible (2) be filed with the Office in
duplicate.

Prior art in the form of patents or printed publications may be cited to
the Office for placement into the patent files. Such citations may be
made without payment of a fee. Citations of prior art may be made
separate from and without a request for reexamination.

The basic purpose for citing prior art in patent files is to inform the
patent owner and the public in general that such patents or printed
publications are in existence and should be considered when evaluating
the validity of the patent claims. Placement of citations in the patent
file along with copies of the cited prior art will also ensure
consideration thereof during any subsequent reissue or reexamination
proceeding.

The citation of prior art provisions of  35 U.S.C. 301 and  37 CFR 1.501
do not apply to citations or protests filed in pending applications.

---SECTION---2203 Persons Who May Cite Prior Art

The patent owner, or any member of the public, may submit prior art
citations of patents or printed publications to the Office.  35 U.S.C.
301 states that "Any person at any time may cite to the Office . . . ."

"Any person" may be a corporate or governmental entity as well as an
individual.

If a person citing prior art desires his or her identity to be kept
confidential, such a person need not identify himself or herself.

"Any person" includes patentees, licensees, reexamination requesters,
real parties in interest, persons without a real interest, and persons
acting for real parties in interest without a need to identify the real
party of interest.

The statute indicates that "at the written request of the person citing
the prior art, his or her identity will be excluded from the patent file
and kept confidential". Although an attempt will be made to exclude any
such papers from the public files, since the review will be mainly
clerical in nature, complete assurance of such exclusion cannot be
given. Persons citing art who desire to remain confidential are
therefore advised to not identify themselves anywhere in their papers.

Confidential citations should include at least an unsigned statement
indicating that the patent owner has been sent a copy of the citation
papers. In the event that it is not possible to serve a copy on the
patent owner, a duplicate copy should be filed with the Office.

Patent examiners should not, at their own initiative, place in a patent
file or forward for placement in the patent file, any citations of prior
art. Patent examiners are charged with the responsibility of making
decisions as to patentability for the Commissioner. Any activity by
examiners which would appear to indicate that patent claims are not
patentable, outside of those cases pending before them, is considered to
be inappropriate.

---SECTION---2204 Time for Filing Prior Art Citation

Citations of prior art may be filed "at any time" under  35 U.S.C. 301.
However, this period has been defined by rule (37 CFR 1.501(a)) to be
"any time during the period of enforceability of a patent." The period
of enforceability is the length of the term of the patent plus the 6
years under the statute of limitations for bringing an infringement
action (35 U.S.C. 286). In addition, if litigation is instituted within
the period of the statute of limitations, citations may be submitted
after the statute of limitations has expired, as long as the patent is
still enforceable against someone. While citations of prior art may be
filed at any time during the period of enforceability of the patent,
citations submitted after the date of any order to reexamine will not be
entered into the patent file until the pending reexamination proceeding
has been terminated (37 CFR 1.501(a)), unless the citations are
submitted (1) by the patent owner; (2) by a reexamination requester who
also submits the fee and other documents required under  37 CFR 1.510;
or (3) in a response under  37 CFR 1.535.  Therefore, if prior art cited
by a third party is to be considered without the payment of another
reexamination fee, it must be presented before reexamination is ordered.

The purpose of this rule is to prevent harassment of the patent owner
due to frequent submissions of prior art citations during reexamination
proceedings.

---SECTION---2205 Content of Prior Art Citation

The prior art which may be submitted under  35 U.S.C. 301 is limited to
"written prior art consisting of patents or printed publications."

An explanation is required of how the person submitting the prior art
considers it to be pertinent and applicable to the patent, as well as an
explanation of why it is believed that the prior art has a bearing on
the patentability of any claim of the patent. Citations of prior art by
patent owners may also include an explanation of how the claims of the
patent differ from the prior art cited.

It is preferred that copies of all the cited prior patents or printed
publications and any necessary English translation be included so that
the value of the citations may be readily determined by persons
inspecting the patent files and by the examiner during any subsequent
reexamination proceeding.

All prior art citations filed by persons other than the patent owner
must either indicate that a copy of the citation has been mailed to, or
otherwise served on, the patent owner at the correspondence address as
defined under  37 CFR 1.33(c), or if for some reason service on the
patent owner is not possible, a duplicate copy of the citation must be
filed with the Office along with an explanation as to why the service
was not possible. The most recent address of the attorney of record may
be obtained from the Office's register of registered patent attorneys
and agents maintained by the Office of Enrollment and Discipline
pursuant to  37 CFR 10.5 and 10.11(a).

All prior art citations submitted should identify the patent in which
the citation is to be placed by the patent number, issue date, and
patentee.

A cover sheet with an identification of the patent should have firmly
attached to it all other documents relating to the citation so that the
documents will not become separated during processing. The documents
themselves should also contain, or have placed thereon, an
identification of the patent for which they are intended.

Affidavits or declarations relating to the prior art documents submitted
may accompany the citation to explain the contents or pertinent dates in
more detail.  A commercial success affidavit tied in with a particular
prior art document may also be acceptable.  For example, the patent
owner may wish to cite a patent or printed publication which raises the
issue of obviousness of at least one patent claim. Together with the
cited art, the owner may file (a) an affidavit of commercial success or
other evidence of nonobviousness, or (b) an affidavit which questions
the enablement of the teachings of the cited prior art.

No fee is required for the submission of citations under  37 CFR 1.501.

A prior art citation is limited to the citation of patents and printed
publications and an explanation of the pertinency and applicability of
the patents and printed publications. This may include an explanation by
the patent owner as to how the claims differ from the prior art. It may
also include affidavits and declarations. The prior art citation cannot
include any issue which is not directed to patents and printed
publications. Thus, for example, a prior art citation cannot include a
statement as to the claims violating  35 U.S.C. 112, a statement as to
the public use of the claimed invention, or a statement as to the
conduct of the patent owner.  A prior art citation must be directed to
patents and printed publications and cannot discuss what the patent
owner did, or failed to do, with respect to submitting and/or describing
patents and printed publications, because that would be a statement as
to the conduct of the patent owner. The citation also should not contain
argument and discussion of references previously treated in the
prosecution of the invention which matured into the patent or references
previously treated in a reexamination proceeding as to the patent. 

If the prior art citation contains any issue not directed to patents and
printed publications, it should not be entered into the patent file,
despite the fact that it may otherwise contain a complete submission of
patents and printed publications with an explanation of the pertinency
and applicability. Rather, the prior art citation should be returned to
the sender as described in MPEP Section  2206.

Examples of letters submitting prior art under  37 CFR 1.501 follow.

EXAMPLE I

Submission by a third party:

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EXAMPLE II

Submission by the patent owner:

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---SECTION---2206 Handling of Prior Art Citation

Prior art citations received in the Office will be forwarded to the
Reexamination Preprocessing area of the Office of Initial Patent
Examination (OIPE) for handling.

If the prior art citation relates to a patent currently undergoing
reexamination, the Reexamination Preprocessing area should promptly
forward the prior art citation to the examining group assigned the
reexamination proceeding.

It is the responsibility of the Reexamination Preprocessing area
personnel where no reexamination proceeding is present, or the examining
group personnel where a reexamination proceeding is present, to
immediately determine whether a citation meets the requirements of the
law and rules and to enter it into the patent file at the appropriate
time if it is proper.

If a proper citation is filed after the date of an order for
reexamination, the citation is retained (stored) in the examining group
until the reexamination is terminated.  Note  37 CFR 1.501(a) and MPEP
Section  2294.  A tag should be placed on the reexamination file as a
reminder of the citation to be placed in the patent file after
termination of the reexamination proceeding. The citation is then placed
in the Group's citation storage file. After the reexamination proceeding
is terminated, the citation is removed from the storage file and
processed for placement in the patent file. Citations filed after the
date of an order for reexamination will not be considered by the
examiner during the reexamination.

I. CITATION QUALIFIES FOR ENTRY UNDER  37 CFR 1.501

A. Citations by Third Party

1. Prior to Order in Any Pending Reexamination Proceeding

If the citation is proper (i.e., limited to patents and printed
publications) and is filed prior to an order in a reexamination
proceeding, it should be immediately entered into the patent file. If
the citation includes an indication of service on the patent owner, the
citation is merely timely entered and no notice of such entry is sent to
any party.  If the citation does not include an indication of service,
the patent owner should be notified that a citation of prior art has
been entered into the patent file. If a duplicate copy of the citation
was filed, the duplicate copy should be sent to the patent owner along
with the notification. If no duplicate copy is present, no copy will be
sent with the notification. Wording similar to the following should be
used:

"A citation of prior art under  35 U.S.C. 301 and  37 CFR 1.501 has been
filed on ____ in your patent number ____ entitled________.

This notification is being made to inform you that the citation of prior
art has been placed in the file wrapper of the above identified patent.

The person submitting the prior art:

1. [  ] was not identified

2. [  ] is confidential

3. [  ] is ____________."

2. After the Order in Any Pending Reexamination Proceeding

If the citation is proper but is filed after an order for reexamination
in a pending reexamination, the citation is not entered at the time
because of the ongoing reexamination. The patent owner and sender (if
known) should be alerted of this fact. Such notification is important to
enable the patent owner to consider submitting the prior art under  37
CFR 1.555 during the reexamination. Such notification will also enable
the third party sender to consider the desirability of filing a separate
request for reexamination. If the citation does not include service of a
copy on the patent owner and a duplicate copy is submitted, the
duplicate copy should be sent to the patent owner along with the
notification. If a duplicate copy is not present, no copy will accompany
the notification to the patent owner. In this situation, the original
copy (in storage) should be made available for copying by the patent
owner.  If the citation includes service of a copy on the patent owner,
the citation is placed in storage and not entered until the
reexamination is terminated. The patent owner and third party sender (if
known) should be given notice of this action.

An example of a letter giving notice to the patent owner and third party
sender is as follows.

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B. Citation Filed by Patent Owner

If a proper prior art citation is filed by the patent owner, it should
be entered in the file. This is true whether the citation is filed prior
to or after an order for reexamination has been mailed. No notification
to the patent owner is necessary.

The following diagram shows the various situations which can occur when
a proper prior art citation is filed and the action to be taken for each
alternative situation:

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II. CITATION DOES NOT QUALIFY FOR ENTRY UNDER 37 CFR 1.501

  A.	Citation by Third Party

If the citation is not proper (e.g., it is not limited to patents or
printed publications), it should not be entered in the patent file. The
sender (if known) and the patent owner   in all cases should be notified
that the citation is improper and that it is not being entered in the
patent file. The handling of the citation will vary depending on the
particular following situation.

1. Service of Copy Included

Where the citation includes an indication of service of copy on the
patent owner and the identity of the third party sender is known, the
original citation paper should be returned to the third party sender
along with the notification of nonentry.  If the identity of the third
party sender is not known, the original citation papers should be
discarded.

2. Service of Copy Not Included; Identity of Third Party Sender Known

Where the citation does not include an indication of service on the
patent owner, the identity of the third party sender is known, and a
duplicate copy of the citation is present, the original citation papers
should be returned to the third party sender and the duplicate copy
should be sent to the patent owner along with the notification of
nonentry. If the duplicate copy required in  37 CFR 1.501(c) is not
present, the original citation papers should be sent to the PATENT OWNER
along with the notification of nonentry. The third party sender should
be sent a notification that the citation was not entered and that the
original citation papers were sent to the patent owner.

3. Service of Copy Not Included; Identity of Third Party Sender Not
Known

Where the citation does not include an indication of service, the
identity of the third party sender is not known, and a duplicate copy of
the citation is or is not present, the duplicate copy (if present)
should be discarded and the original citation papers should be sent to
the patent owner along with the notification of nonentry.

B. Citation Filed by the Patent Owner

If an improper prior art citation under  37 CFR 1.501 is filed by the
patent owner prior to an order for reexamination, it should not be
entered in the file.

The patent owner should be notified of the nonentry, and the citation
papers should be returned to the patent owner along with the
notification. Prior art submission filed by the patent owner after an
order for reexamination should be entered in the file under  37 CFR
1.555.

The following diagram shows the various situations which can occur when
an improper prior art citation is filed and the action to be taken for
each alternative situation. Any unusual problems should be brought to
the attention of the Office of the Deputy Assistant Commissioner for
Patent Policy and Projects.

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---SECTION---2207 Entry of Court Decision in Patent File

The Solicitor's Office processes notices required by  35 U.S.C. 290,
received from the clerks of the various courts, and has them entered in
the patent file. However, it is considered desirable that the entire
court decision be supplied to the Office for entry into the patent file.
Accordingly, the Office will accept at any time from any party for
placement in the patent file, submissions of the following: copies of
notices of suits and other proceedings involving the patent and copies
of decisions or other court papers, or papers filed in the court, from
litigations or other proceedings involving the patent. Such submissions
must be provided without additional comment. Persons making such
submissions must limit the submission to the notification and not
include further arguments or information. Any proper submission will be
promptly placed on record (entered) in the patent file. Entry of these
submissions is performed by the Files Repository personnel, unless a
reexamination proceeding is pending, in which case, the examining group
(or other area of the Office) having responsibility for the
reexamination enters the submission.

WHERE A REQUEST FOR REEXAMINATION OF THE PATENT HAS BEEN FILED

It is important for the Office to be aware of any prior court or other
proceedings in which a patent undergoing reexamination is or was
involved, and any results of such proceedings. In accordance with  37
CFR 1.565(a), the patent owner is required to provide the Office with
information regarding the existence of any such proceedings and the
results thereof, if known. As to third parties, note as follows.
Ordinarily, while a reexamination proceeding is pending, third party
submissions filed after the date of the order are not placed in the
reexamination or the patent file. However, in order to ensure a complete
file, with updated status information as to prior proceedings regarding
a patent undergoing reexamination, submissions (as above-described)
limited to bare notice of the proceedings, with copies of the papers of
the proceedings, will be accepted and placed in the file at any time
during the reexamination from any party. See MPEP Section  2240 and
Section  2242 for handling of requests for reexamination of patents
involved in litigation.

---SECTION---2208 Service of Citation on Patent Owner

A copy of any submission of a citation of prior art patents or printed
publications in a patent file should be served on the patent owner so
that the patent owner is kept fully informed as to the content of his or
her patent file wrapper. See MPEP Section  2206 for handling of prior
art citations.

The service to the patent owner should be addressed to the
correspondence address as set forth in  37 CFR 1.33(c). See MPEP Section 
2222 as to the correspondence address.

---SECTION---2209 Reexamination

Procedures for reexamination of issued patents began on July 1, 1981,
the date when the reexamination provisions of Public Law 96-517 came
into effect.

The reexamination statute and rules permit any person to file a request
for reexamination containing certain elements and the fee required under 
37 CFR 1.20(c).  The Office initially determines if "a substantial new
question of patentability" (35 U.S.C. 303(a)) is presented. If such a
new question has been presented, reexamination will be ordered. The
reexamination proceedings which follow the order for reexamination are
very similar to regular examination procedures in patent applications;
however, there are notable differences. For example, there are certain
limitations as to the kind of rejections which may be made, special
reexamination forms to be used, and time periods set to provide "special
dispatch." When the reexamination proceedings are terminated, a
certificate is issued which indicates the status of all claims following
the reexamination.

The following sections of this chapter explain the details of
reexamination.

The intent of the reexamination procedures covered in this chapter
include the following:

(A) To provide procedures for reexamination of patents;

(B) To implement reexamination in an essentially ex parte manner;

(C) To minimize the processing costs and complexities of reexamination;

(D) To maximize respect for the reexamined patent;

(E) To provide procedures for prompt and timely determinations by the
Office in accordance with the "special dispatch" requirements of  35
U.S.C. 305.

The basic characteristics of reexamination are as follows:

(A) Anyone can request reexamination at any time during the period of
enforceability of the patent;

(B) Prior art considered during reexamination is limited to prior art
patents or printed publications applied under the appropriate parts of 
35 U.S.C. 102 and 103;

(C) A substantial new question of patentability must be present for
reexamination to be ordered;

(D) If ordered, the actual reexamination proceeding is ex parte in
nature;

(E) Decision on the request must be made no later than 3 months from its
filing, and the remainder of proceedings must proceed with "special
dispatch;"

(F) If ordered, a reexamination proceeding will normally be conducted to
its conclusion and the issuance of a reexamination certificate;

(G) The scope of a claim cannot be enlarged by amendment;

(H) All reexamination and patent files are open to the public.

---SECTION---2210 Request for Reexamination

35 U.S.C. 302 Request for reexamination.

Any person at any time may file a request for reexamination by the
Office of any claim of a patent on the basis of any prior art cited
under the provisions of section 301 of this title.  The request must be
in writing and must be accompanied by payment of a reexamination fee
established by the Commissioner of Patents pursuant to the provisions of
section 41 of this title. The request must set forth the pertinency and
manner of applying cited prior art to every claim for which
reexamination is requested. Unless the requesting person is the owner of
the patent, the Commissioner promptly will send a copy of the request to
the owner of record of the patent.

37 CFR 1.510 Request for reexamination.

(a) Any person may, at any time during the period of enforceability of a
patent, file a request for reexamination by the Patent and Trademark
Office of any claim of the patent on the basis of prior art patents or
printed publications cited under Section  1.501. The request must be
accompanied by the fee for requesting reexamination set in Section 
1.20(c).

(b) Any request for reexamination must include the following parts:

(1) A statement pointing out each substantial new question of
patentability based on prior patents and printed publications.

(2) An identification of every claim for which reexamination is
requested, and a detailed explanation of the pertinency and manner of
applying the cited prior art to every claim for which reexamination is
requested. If appropriate, the party requesting reexamination may also
point out how claims distinguish over cited prior art.

(3) A copy of every patent or printed publication relied upon or
referred to in paragraph (b) (1) and (2) of this section accompanied by
an English language translation of all the necessary and pertinent parts
of any non-English language patent or printed publication.

(4) The entire specification (including claims) and drawings of the
patent for which reexamination is requested must be furnished in the
form of cut-up copies of the original patent with only a single column
of the printed patent securely mounted or reproduced in permanent form
on one side of a separate paper. A copy of any disclaimer, certificate
of correction, or reexamination certificate issued in the patent must
also be included.

(5) A certification that a copy of the request filed by a person other
than the patent owner has been served in its entirety on the patent
owner at the address as provided for in Section  1.33(c). The name and
address of the party served must be indicated. If service was not
possible, a duplicate copy must be supplied to the Office.

(c) If the request does not include the fee for requesting reexamination
or all of the parts required by paragraph (b) of this section, the
person identified as requesting reexamination will be so notified and
given an opportunity to complete the request within a specified time. 
If the fee for requesting reexamination has been paid but the defect in
the request is not corrected within the specified time, the
determination whether or not to institute reexamination will be made on
the request as it then exists. If the fee for requesting reexamination
has not been paid, no determination will be made and the request will be
placed in the patent file as a citation if it complies with the
requirements of Section  1.501(a).

(d) The filing date of the request is: (1) the date on which the request
including the entire fee for requesting reexamination is received in the
Patent and Trademark Office; or (2) the date on which the last portion
of the fee for requesting reexamination is received.

(e) A request filed by the patent owner, may include a proposed
amendment in accordance with Section  1.530(d).

(f) If a request is filed by an attorney or agent identifying another
party on whose behalf the request is being filed, the attorney or agent
must have a power of attorney from that party or be acting in a
representative capacity pursuant to Section  1.34(a).

Any person, at any time during the period of enforceability of a patent,
may file a request for reexamination by the Patent and Trademark Office
of any claim of the patent based on prior art patents or printed
publications. The request must include the elements set forth in  37 CFR
1.510(b) (see MPEP Section  2214) and must be accompanied by the fee as
set forth in  37 CFR 1.20(c).  No attempt will be made to maintain a
requester's name in confidence.

After the request for reexamination, including the entire fee for
requesting reexamination, is received in the Office, no abandonment,
withdrawal, or striking, of the request is possible,regardless of who
requests the same. In some limited circumstances, such as after a court
decision where all of the claims are finally held invalid, a
reexamination order may be vacated, see MPEP Section  2286.

---SECTION---2211 Time for Requesting Examinations

Under  37 CFR 1.510(a), any person may, at any time during the period of
enforceability of a patent, file a request for reexamination. This
period was set by rule, since no useful purpose was seen for expending
Office resources on deciding patent validity questions in patents which
cannot be enforced. In this regard see Patlex Corp. v. Mossinghoff, 758
F.2d 594, 225 USPQ 243, 249 (Fed. Cir. 1988). The period of
enforceability is determined by adding 6 years to the date on which the
patent expires.  The patent expiration date for a utility patent, for
example, is determined by taking into account the term of the patent,
whether maintenance fees have been paid for the patent, and whether any
disclaimer was filed as to the patent to shorten its term. Any other
relevant information should also be taken into account. In addition, if
litigation is instituted within the period of the statute of
limitations, requests for reexamination may be filed after the statute
of limitations has expired, as long as the patent is still enforceable
against someone.

---SECTION---2212 Persons Who May File a Request

37 CFR 1.510 Request for reexamination.

(a) Any person may, at any time during the period of enforceability of a
patent, file a request for reexamination by the Patent and Trademark
Office of any claim of the patent on the basis of prior art patents or
printed publications cited under Section  1.501. The request must be
accompanied by the fee for requesting reexamination set in Section 
1.20(c).

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35 U.S.C. 302 and  37 CFR 1.510(a) both indicate that "any person" may
file a request for reexamination of a patent. Accordingly, there are no
persons who are excluded from being able to seek reexamination.
Corporations and/or governmental entities are included within the scope
of the term "any person." The patent owner can ask for reexamination
which will be limited to an ex parte consideration of prior patents or
printed publications. If the patent owner wishes to have a wider
consideration of issues by the Office, including matters such as prior
public use or sale, the patent owner may file a reissue application. It
is also possible for the Commissioner to initiate reexamination on the
Commissioner's own initiative under  37 CFR 1.520. Reexamination will be
initiated by the Commissioner on a very limited basis, such as where a
general public policy question is at issue and there is no interest by
"any other person."  Some of the persons likely to use reexamination are
patentees, licensees, potential licensees, attorneys without
identification of their real client in interest, infringers, potential
exporters, patent litigants, interference applicants, and International
Trade Commission respondents. The name of the person who files the
request will not be maintained in confidence.

---SECTION---2213 Representative of Requester

37 CFR 1.510 Request for reexamination.

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(f) If a request is filed by an attorney or agent identifying another
party on whose behalf the request is being filed, the attorney or agent
must have a power of attorney from that party or be acting in a
representative capacity pursuant to Section  1.34(a).

Where an attorney or agent files a request for an identified client (the
requester), he or she may act under either a power of attorney, or act
in a representative capacity under  37 CFR 1.34(a),  37 CFR 1.510(f).
While the filing of the power of attorney is desirable, processing of
the reexamination request will not be delayed due to its absence.

If any question of authority to act is raised, proof of authority may be
required by the Office.

All correspondence for a requester that is not the patent owner should
be addressed to the representative of the requester, unless a specific
indication is made to forward correspondence to another address.

If the request is filed by a person on behalf of the patent owner,
correspondence will be directed to the patent owner at the address as
indicated in  37 CFR 1.33(c), regardless of the address of the person
filing the request.  See MPEP Section  2222 for a discussion of who
receives correspondence on behalf of a patent owner and how changes in
the correspondence address are to be made.

A patent owner may not be represented during a reexamination proceeding
by an attorney or other person who is not registered to practice before
the Office, since those individuals are prohibited by  37 CFR 1.33(c)
from signing amendments and other papers filed in a reexamination
proceeding on behalf of the patent owner.

---SECTION---2214 Content of Request

37 CFR 1.510 Request for reexamination.

(a)	Any person may, at any time during the period of enforceability of a
patent, file a request for reexamination by the Patent and Trademark
Office of any claim of the patent on the basis of prior art patents or
printed publications cited under Section  1.501. The request must be
accompanied by the fee for requesting reexamination set in Section 
1.20(c).

                  +++    

37 CFR 1.510(a) requires the payment of the fee specified in  37 CFR
1.20(c) for a request for reexamination. See MPEP Section  2215.

37 CFR 1.510(b) sets forth the required elements of a request for
reexamination. The elements are as follows:

"(1)  a statement pointing out each substantial new question of
patentability based on prior patents and printed publications." This
statement should clearly point out what the requester considers to be
the substantial new question of patentability which would warrant a
reexamination. The cited prior art should be listed on a form PTO-1449
by the requester.  See also MPEP Section  2217.

A request for reexamination should not be filed to resolve issues of
patentability as to certain references, while at the same time, the
request urges that those references do not present a substantial new
question of patentability (and that no order for reexamination should be
issued).

"(2) An identification of every claim for which reexamination is
requested, and a detailed explanation of the pertinency and manner of
applying the cited prior art to every claim for which reexamination is
requested. If appropriate the party requesting reexamination may also
point out how claims distinguish over cited prior art."

The request should apply the cited prior art to every claim for which
reexamination is requested. If the request is filed by the patent owner,
he or she may also indicate how the claims distinguish from the cited
prior art patents and printed publications.

	"(3) A copy of every patent or printed publication relied upon or
referred to in paragraph (b)(1) and (2) of this section accompanied by
an English language translation of all the necessary and pertinent parts
of any non- English language patent or printed publication."

A copy of each cited patent or printed publication, as well as a
translation of each non-English document is required so that all
materials will be available to the examiner for full consideration.  See
MPEP Section  2218.

	"(4) The entire specification (including claims) and drawings of the
patent for which reexamination is requested must be furnished in the
form of cut-up copies of the original patent with only a single column
of the printed patent securely mounted or reproduced in permanent form
on one side of a separate paper.  A copy of any disclaimer, certificate
of correction, or reexamination certificate issued in the patent must
also be included."

A copy of the patent, for which reexamination is requested, should be
provided in a single column paste-up format so that amendments can be
easily entered and to ease printing.  See also MPEP Section  2219.  The
front page of the patent may be presented in whole page format (i.e.,
not single column). The drawings are presented as whole pages of
drawings.

"(5) A certification that a copy of the request filed by a person other
than the patent owner has been served in its entirely on the patent
owner at the address as provided for in Section  1.33(c). The name and
address of the party served must be indicated.  If service was not
possible, a duplicate copy must be supplied to the Office."

If the request is filed by a person other than the patent owner, a
certification that a copy of the request papers has been served on the
patent owner must be included. The request should be as complete as
possible, since there is no guarantee that the examiner will consider
other prior art when making the decision on the request. Also, if no
statement is filed by the patent owner, no later reply may be filed by
the requester. See also MPEP Section  2220.

Form PTO-1465 should be helpful to persons filing requests for
reexamination. The use of this form is encouraged, but its use is not a
requirement of the law nor the rules.

Form PTO/SB/57. Request for Reexamination Transmittal Form[GRAPHIC]

[GRAPHIC]

[GRAPHIC]

[GRAPHIC]

[GRAPHIC]

---SECTION---2215 Fee for Requesting Reexamination

In order for a request to be accepted, be given a filing date, and be
published in the Official Gazette, it is necessary that the entire fee
required under  37 CFR 1.20(c) for filing a request for reexamination be
paid.

If the request for reexamination is subsequently denied or vacated, a
refund in accordance with  37 CFR 1.26(c) will be made to the identified
requester.

If the entire fee for reexamination is not paid, the request will be
considered to be incomplete. As stated in  37 CFR 1.510 (c) and (d):

(c)	If the request does not include the fee for requesting reexamination
or all of the parts required by paragraph (b) of this section, the
person identified as requesting reexamination will be so notified and
given an opportunity to complete the request within a specified time. 
If the fee for requesting reexamination has been paid but the defect in
the request is not corrected within the specified time, the
determination whether or not to institute reexamination will be made on
the request as it then exists.  If the fee for requesting reexamination
has not been paid, no determination will be made and the request will be
placed in the patent file as a citation if it complies with the
requirements of Section  1.501(a).

   (d)	The filing date of the request is: (1) the date on which the
request including the entire fee for requesting reexamination is
received in the Patent and Trademark Office; or (2) the date on which
the last portion of the fee for requesting reexamination is received.                    
+++    

Where the entire filing fee is not paid, the request, if otherwise
proper, should be treated as a citation of prior art under  37 CFR
1.501.  See MPEP Section  2206 for handling of prior art citations.

---SECTION---2216 Substantial New Question of Patentability

37 CFR 1.510(b)(1) requires that the request include "a statement
pointing out each substantial new question of patentability based on
prior patents and printed publications." Under  35 U.S.C. 304, the
Office must determine whether "a substantial new question of
patentability" affecting any claim of the patent has been raised. If
such a new question is found, an order for reexamination of the patent
is issued. It is therefore clear that it is extremely important that the
request clearly set forth in detail exactly what the requester considers
the "substantial new question of patentability" to be in view of prior
patents and printed publications. The request should point out how any
questions of patentability raised are substantially different from those
raised in the previous examination of the patent before the Office.  If
a substantial new question of patentability is found as to one claim,
all claims will be reexamined during the ex parte reexamination process. 
See also MPEP Section  2242.

Questions relating to grounds of rejection other than those based on
prior art patents or printed publications should not be included in the
request and will not be considered by the examiner if included. Examples
of such questions that will not be considered are public use, on sale,
and fraud.

Affidavits or declarations which explain the contents or pertinent dates
of prior patents or printed publications in more detail may be
considered in reexamination. See MPEP Section  2258.

---SECTION---2217 Statement in the Request Applying Prior Art

The third sentence of  35 U.S.C. 302 indicates that the "request must
set forth the pertinency and manner of applying cited prior art to every
claim for which reexamination is requested."  37 CFR 1.510(b)(2)
requires that the request include "An identification of every claim for
which reexamination is requested, and a detailed explanation of the
pertinency and manner of applying the cited prior art to every claim for
which reexamination is requested."  If the request is filed by the
patent owner, the request for reexamination may also point out how
claims distinguish over cited prior art.

The prior art applied may only consist of prior art patents or printed
publications. Substantial new questions of patentability may be based
upon the following portions of  35 U.S.C. 102:

"(a) patented or described in a printed publication in this or a foreign
country, before the invention thereof by the applicant for patent, or"

   "(b) the invention was patented or described in a printed publication
in this or a foreign country . . . more than one year prior to the date
of the application for patent in the United States, or"                    
+++        "(d) the invention was first patented or caused to be
patented, or was the subject of an inventor's certificate, by the
applicant or his legal representatives or assigns in a foreign country
prior to the date of the application for patent in this country on an
application for patent or inventor's certificate filed more than twelve
months before the filing of the application in the United States, or"

   "(e) the invention was described in a patent granted on an
application for patent by another filed in the United States before the
invention thereof by the applicant for patent, or on an international
application by another who has fulfilled the requirements of paragraphs
(1), (2), and (4) of section 371(c) of this title before the invention
thereof by the applicant for patent, or"                     +++    

Similarly, substantial new questions of patentability may also be made
under  35 U.S.C. 103 which are based on the above indicated portions of 
35 U.S.C. 102. Public Law 98-622 enacted on November 8, 1984, changed a
complex body of case law and amended  35 U.S.C. 103 by adding a new
sentence which provides that the subject matter developed by another
which qualifies as prior art only under  35 U.S.C. 102(f) or (g) shall
not preclude patentability under  35 U.S.C. 103, provided the subject
matter and the claimed invention were commonly owned at the time the
invention was made. This change overrules the practice under In re Bass,
474 F.2d 1276, 177 USPQ 178, (CCPA 1973) wherein an earlier invention by
a co-employee was treated as  35 U.S.C. 103 prior art and applies
through  35 U.S.C. 102(g), and possibly through  35 U.S.C. 102(f) with
respect to a later invention made by another employee of the same
organization. However, the Federal Circuit held in E.I. du Pont de
Nemours Co. v. Phillips Petroleum Co., 849 F.2d 1430, 7 USPQ2d 1129
(Fed. Cir. 1988), that the prior work of another under  35 U.S.C.
102(g), except as qualified by  35 U.S.C. 103 with respect to certain
commonly owned subject matter, can be used as  35 U.S.C. 103 prior art
so long as it has not been abandoned, suppressed, or concealed.
Accordingly, substantial new questions of patentability may be found
under  35 U.S.C. 102(f)/103 or (g)/103 based on the prior invention of
another disclosed in a patent or printed publication. See Chapter 2100.

Substantial new questions of patentability must be based on patents or
printed publications. Other matters, such as public use or sale,
inventorship,  35 U.S.C. 101,  35 U.S.C. 112, fraud, etc., will not be
considered when making the determination on the request and should not
be presented in the request. Further, a prior art patent or printed
publication cannot be properly applied as a ground for reexamination if
it is merely used as evidence of alleged prior public use or sale,
insufficiency of disclosure, etc. The prior art patent or printed
publication must be applied directly to claims under  35 U.S.C. 103
and/or an appropriate portion of  35 U.S.C. 102 or relate to the
application of other prior art patents or printed publications to claims
on such grounds.

The statement applying the prior art may, where appropriate, point out
that claims in the patent for which reexamination is requested are
entitled only to the filing date of the patent and are not supported by
an earlier foreign or United States patent application whose filing date
is claimed. For example, the effective date of some of the claims in a
patent which resulted from a continuing application under  35 U.S.C. 120
could be the filing date of the continuing application since those
claims were not supported in the parent application. Therefore,
intervening patents or printed publications are available as prior art
under In re Ruscetta, 255 F.2d 687, 118  USPQ 101 (CCPA 1958),   In re
van Langehoven, 458 F.2d 132,173 USPQ 426 (CCPA 1972). See also MPEP
Section  201.11.

Double patenting is normally proper for consideration in reexamination. 
See In re Lonardo, 119 F.3d 960, 43 USPQ2d 1262 (Fed. Cir. 1997).  See
also the discussion as to double patenting in MPEP Section  2258.

The mere citation of new patents or printed publications without an
explanation does not comply with  37 CFR 1.510(b)(2). Requester must
present an explanation of how the cited patents or printed publications
are applied to all claims which requester considers to merit
reexamination. This not only sets forth the requester's position to the
Office, but also to the patent owner (where the patent owner is not the
requester).

Affidavits or declarations which explain the contents or pertinent dates
of prior patents or printed publications in more detail may be
considered in reexamination. See MPEP Section  2258.

ADMISSIONS

The consideration under  35 U.S.C. 303 of a request for reexamination is
limited to prior art patents and printed publications. See Ex parte
McGaughey, 6 USPQ2d 1334, 1337 (Bd. Pat. App. & Inter. 1988). Thus an
admission, per se,   may not be the basis for establishing a substantial
new question of patentability. However, an admission by the patent owner
of record in the file or in a court record may be utilized in
combination with a patent or printed publication.

For handling of admissions during the examination stage of a proceeding
(i.e., after reexamination has been ordered),  see MPEP Section  2258.

The admission can reside in the patent file (made of record during the
prosecution of the patent application) or may be presented during the
pendency of the reexamination proceeding or in litigation.  Admissions
by the patent owner as to any matter affecting patentability may be
utilized to determine the scope and content of the prior art in
conjunction with patents and printed publications in a prior art
rejection, whether such admissions result from patents or printed
publications or from some other source. An admission relating to any
prior art (i.e., on sale, public use, etc.) established in the record or
in court may be used by the examiner in combination with patents or
printed publications in a reexamination proceeding. The admission must
stand on its own.  Information supplementing or further defining the
admission would be improper.

Any admission submitted by the patent owner is proper.  A third party,
however, may not submit admissions of the patent owner made outside the
record of the file or the court record.  Such a submission would be
outside the scope of reexamination.

---SECTION---2218 Copies of Prior Art

It is required that a copy of each patent or printed publication relied
on or referred to in the request be filed with the request (37 CFR
1.510(b)(3)). If any of the documents are not in the English language,
an English language translation of all necessary and pertinent parts is
also required. An English language summary or abstract of a non-English
language document is usually not sufficient.

It is also helpful to include copies of the prior art considered during
earlier prosecution of the patent for which reexamination is requested.
The presence of both the old and the new prior art allows a comparison
to be made to determine whether a substantial new question of
patentability is indeed present. See MPEP Section  2242.

  Copies of parent applications should be submitted if the content of
the parent application has a bearing on the alleged substantial new
question of patentability; for example, if the patent is a
continuation-in-part and the question of patentability relates to an In
re Ruscetta, 255 F. 2d 687, 118 USPQ 101 (CCPA 1958) type rejection
where support in the parent application is relevant.

---SECTION---2219 Copy of Printed Patent

The Patent and Trademark Office will prepare a separate file wrapper for
each reexamination request which will become part of the patent file.
Since, in some instances, it may not be possible to obtain the patent
file promptly, and in order to provide a format which can be amended and
used for printing, requesters are required under  37 CFR 1.510(b)(4) to
include a copy of the patent for which reexamination is requested to
serve as the specification for the reexamination proceeding.  The copy
of the patent must be provided in the form of a cut-up copy of the
original printed patent with only a single column of the patent securely
mounted or reproduced in permanent form on one side of a sheet of paper.
A copy of any disclaimer, certificate of correction, or reexamination
certificate issued for the patent must also be included, so that a
complete history of the patent is before the Office for consideration. A
copy of any Federal Court decision, complaint in a pending civil action,
or interference decision should also be submitted.

---SECTION---2220 Certificate of Service

If the requester is a person other than the patent owner, the owner of
the patent must be served with a copy of the request in its entirety.
The service should be made to the correspondence address as indicated in 
37 CFR 1.33(c). The name and address of the person served and the
certificate of service should be indicated on the request.

The most recent address of the attorney or agent of record can be
determined by checking the Office's register of patent attorneys and
agents maintained by the Office of Enrollment and Discipline pursuant to 
37 CFR 10.5 and 10.11(a).  See MPEP Section  2266.03 regarding service
on requester and on the patent owner.

---SECTION---2221 Amendments Included in Request by Patent Owner

Under  37 CFR 1.510(e), a patent owner may include a proposed amendment
with his or her request. Any such amendment must be in accordance with 
37 CFR 1.530(d).  See MPEP Section  2250.  Amendments may also be
proposed by patent owners in a statement under  37 CFR 1.530 or during
the actual ex parte reexamination prosecution (37 CFR 1.550(b)). See
also MPEP Section  2234 and Section  2250.

The request should be decided on the wording of the patent claims in
effect at that time (without any proposed amendments). The decision on
the request will be made on the basis of the patent claims as though the
proposed amendment had not been presented.  However, if the request for
reexamination is granted, the ex parte reexamination prosecution and
examination should be on the basis of the claims as amended.

---SECTION---2222 Address of Patent Owner

37 CFR 1.33 Correspondence respecting patent applications, reexamination
proceedings, and other proceedings.

                  +++    

(c)	All notices, official letters, and other communications for the
patent owner or owners in a reexamination proceeding will be directed to
the attorney or agent of record (see Section  1.34(b)) in the patent
file at the address listed on the register of patent attorneys and
agents maintained pursuant to Section  10.5 and Section  10.11 or, if no
attorney or agent is of record, to the patent owner or owners at the
address or addresses of record. Amendments and other papers filed in a
reexamination proceeding on behalf of the patent owner must be signed by
the patent owner, or if there is more than one owner by all the owners,
or by an attorney or agent of record in the patent file, or by a
registered attorney or agent not of record who acts in a representative
capacity under the provisions of Section  1.34(a). Double correspondence
with the patent owner or owners and the patent owner's attorney or
agent, or with more than one attorney or agent, will not be undertaken.
If more than one attorney or agent is of record and a correspondence
address has not been specified, correspondence will be held with the
last attorney or agent made of record.

                  +++    

In  37 CFR 1.33(c), it is indicated which correspondence address is to
be normally used to direct correspondence to the patent owner. In most
instances, this will be the address of the first named, most recent
attorney or agent of record in the patent file, at his or her current
address. As a general rule, the attorney-client relationship terminates
when the purpose for which the attorney was employed is accomplished;
e.g., the issuance of a patent to the client.  However, apart from the
attorney- client relationship, the Office has, by regulation,  37 CFR
10.23(c)(8), made it the responsibility of every "practitioner," by
virtue of his/her registration, "to inform a client or     former client
... of correspondence received from the Office ... when the
correspondence (i) could have a significant effect on a matter pending
before the Office, (ii) is received by the practitioner on behalf of a
client or former client, and (iii) is correspondence of which a
reasonable practitioner would believe under the circumstances the client
or former client should be notified." (Emphasis added.) This
responsibility of a practitioner to a former client manifestly is not
eliminated by withdrawing as an attorney of record. The practitioner if
he/she so desires, can minimize the need for forwarding correspondence
concerning issued patents by having the correspondence address changed
after the patent issues if the correspondence address is the
practitioner's address, which frequently is the case where the
practitioner is the attorney of record.

Further,  37 CFR 10.23(c)(8) requires a practitioner to "timely notify
the Office of an inability to notify a client or former client of
correspondence received from the Office" (Emphasis added.) As the
language of this requirement clearly indicates, the duty to notify the
Office is a consequence, not of any attorney-client relationship, but
rather arises by virtue of the practitioner's status as a registered
attorney or agent.

If the patent owner desires that a different attorney or agent receive
correspondence, then a new power of attorney must be filed.
Correspondence will continue to be sent to the attorney or agent of
record in the patent file absent a revocation of the same by the patent
owner. If the attorney or agent of record specifies a correspondence
address to which correspondence is to be directed, such direction should
be followed. However, since a change in the correspondence address does
not withdraw a power of attorney, a change of the correspondence address
by the patent owner does not prevent the correspondence from being
directed to the attorney or agent of record in the patent file under  37
CFR 1.33(c).

Submissions to the Office to change the correspondence address or power
of attorney in the record of the patent should be addressed as follows:

Where a request for reexamination has been filed and the reexamination
has not yet been assigned to an Examining Group-

Assistant Commissioner for Patents

Box Reexam

Washington D.C. 20231

Where a request for reexamination has been filed and the reexamination
has already been assigned to an Examining Group-

Assistant Commissioner for Patents

Washington D.C. 20231

Where no request for reexamination has been filed and the patent is in
storage-

Commissioner of Patents and Trademarks 

ATTN: Dissemination Support Division

Washington D.C. 20231

A sample form for changing correspondence address or power of attorney
is set forth below.

[GRAPHIC]

See MPEP Section  324 for establishing assignee's right to take action
when submitting a power of attorney.

---SECTION---2223 Withdrawal of Attorney or Agent

A request by an attorney or agent of record to withdraw from a patent
will normally be approved only if at least 30 days remain in any running
period for response.  See also MPEP Section  402.06.

---SECTION---2224 Correspondence

37 CFR 1.1 Addresses for correspondence with the Patent and Trademark
Office.

(a) Except for Section  1.1(a)(3) (i) and (ii), all correspondence
intended for the Patent and Trademark Office must be addressed to either
"Commissioner of Patents and Trademarks, Washington, D.C. 20231" or to
specific areas within the Office as set out in paragraphs (a) (1), (2)
and (3)(iii) of this section. When appropriate, correspondence should
also be marked for the attention of a particular office or individual.

(1) Patent correspondence. All correspondence concerning patent matters
processed by organizations reporting to the Assistant Commissioner for
Patents should be addressed to "Assistant Commissioner for Patents,
Washington, D.C. 20231."

                  +++    

(c) Requests for reexamination should be additionally marked "Box
Reexam."

                  +++    

All requests for reexamination mailed to the Patent and Trademark Office
should be additionally marked "Box Reexam." on the face of the outer
envelope. Such mail will be sorted out immediately and processed by the
Reexamination Preprocessing staff. The use of "Box Reexam" is limited to
the filing of the original request for reexamination. Subsequent
correspondence should not be marked "Box Reexam." It should be directed
to the examining group art unit indicated on the Office letters. Any
correction or change of correspondence address for a United States
patent should be addressed to the Office at Box "Patent Address Change."

A request for reexamination may not be sent by facsimile transmission.
See  37 CFR 1.6(d)(5).

After the filing of the request for reexamination, any letters sent to
the Patent and Trademark Office relating to a reexamination proceeding
should identify the proceeding by the number of the patent undergoing
reexamination, the reexamination request control number assigned,
examining group art unit, and the name of the examiner. The certificate
of mailing and transmission procedures (37 CFR 1.8) and "Express Mail"
mailing procedure (37 CFR 1.10) may be used to file any paper in an
existing reexamination proceeding.

Communications from the Patent and Trademark Office to the patent owner
will be directed to the first named, most recent attorney or agent of
record in the patent file at the current address on the Office's
register of patent attorneys and agents, or to the patent owner's
address if no attorney or agent is of record,  37 CFR 1.33(c).

Amendments and other papers filed on behalf of patent owners must be
signed by the patent owners, or the registered attorney or agent of
record in the patent file, or any registered attorney or agent acting in
a representative capacity under  37 CFR 1.34(a). See MPEP Section  2213.

Double correspondence with the patent owners and the attorney or agent
normally will not be undertaken by the Office.

Where no correspondence address is otherwise specified, correspondence
will be with the most recent attorney or agent made of record by the
patent owner.

Note MPEP Section  2220 on certificate of service.

---SECTION---2225 Untimely Paper Filed Prior to Order

After filing of a request, no papers other than (1) citations of patents
or printed publications under  37 CFR 1.501, (2) another complete
request under  37 CFR 1.510, or (3) notifications pursuant to MPEP
Section  2282, should be filed with the Office prior to the date of the
decision on the request for reexamination. Any papers other than those
under  37 CFR 1.501 or 1.510 or MPEP Section  2282 filed prior to the
decision on the request will be returned to the sender by the Group
Director without consideration. A copy of the letter accompanying the
returned papers will be made of record in the patent file.  However, no
copy of the returned papers will be retained by the Office. If the
submission of the returned papers is appropriate later in the
proceedings, they will be accepted by the Office at that time. See
Patlex Corp. v. Mossinghoff, 771 F.2d 480, 226 USPQ 985, 989 (Fed. Cir.
1985); In re Knight, 217 USPQ 294 (Comm'r Pat. 1982) and In re Amp Inc.,
212 USPQ 826 (Comm'r Pat. 1981).

---SECTION---2226 Initial Processing of Request

The opening of all mail marked "Box Reexam", and all initial clerical
processing of requests for reexamination, will be performed by the
Reexamination Preprocessing staff in the Office of Initial Patent
Examination (OIPE).

---SECTION---2227 Incomplete Request

37 CFR 1.510 Request for reexamination.

                  +++    

(c) If the request does not include the fee for requesting reexamination
or all of the parts required by paragraph (b) of this section, the
person identified as requesting reexamination will be so notified and
given an opportunity to complete the request within a specified time. If
the fee for requesting reexamination has been paid but the defect in the
request is not corrected within the specified time, the determination
whether or not to institute reexamination will be made on the request as
it then exists. If the fee for requesting reexamination has not been
paid, no determination will be made and the request will be placed in
the patent file as a citation if it complies with the requirements of
Section  1.501(a).

(d) The filing date of the request is: (1) the date on which the request
including the entire fee for requesting reexamination is received in the
Patent and Trademark Office; or (2) the date on which the last portion
of the fee for requesting reexamination is received.

                  +++    

If the required fee under  37 CFR 1.20(c) is not paid in full, the
request is considered to be incomplete,  37 CFR 1.510(c), and will not
be considered on its merits or have a notice of its filing announced in
the Official Gazette.  The request is considered to have a "filing date"
under  37 CFR 1.510(d) only when the entire fee is paid.  Until the
entire fee is received, no control number or filing date will be
assigned and technically, no reexamination exists.

If no fee is received, or only a portion of the fee is received, the
Reexamination Preprocessing staff of OIPE will notify the requester of
the defect and give the requester a specified time, normally 1 month, to
complete the request. This notice does not enter the system. A telephone
call may also be made to the requester indicating the amount of the
insufficient fee. If the request is not timely completed, any partial
fee will be returned by the OIPE to the requester along with a notice
that the reexamination request has not been accepted and the process has
been terminated. The request itself will be treated as a citation under 
37 CFR 1.501(a) if it complies therewith. If the request does not comply
with  37 CFR 1.501(a), the request papers will also be returned to the
requester by OIPE.

---SECTION---2228 Informal Request

If the fee under  37 CFR 1.20(c) has been paid, but the request does not
contain all the elements called for by  37 CFR 1.510(b), the request is
considered to be informal. All requests which are accompanied with the
entire fee will be assigned a filing date from which the 3-month period
for making a decision on the request will be computed. Notice of filing
of all complete requests will be published in the Official Gazette,
approximately 4-5 weeks after filing.

The Reexamination Preprocessing staff of OIPE will attempt to notify the
requester of any informality in the request in order to give the
requester time to respond before a decision is made on the request. If
the requester does not respond and correct the informality, the decision
on the request will be made on the information presented. If the
information presented does not present "a substantial new question of
patentability," the request for reexamination will be denied.

---SECTION---2229 Notice of Request in Official Gazette

37 CFR 1.11 Files open to the public.

                  +++    

(c) All requests for reexamination for which the fee under Section 
1.20(c) has been paid, will be announced in the Official Gazette. Any
reexaminations at the initiative of the Commissioner pursuant to Section 
1.520 will also be announced in the Official Gazette. The announcement
shall include at least the date of the request, if any, the
reexamination request control number or the Commissioner initiated order
control number, patent number, title, class and subclass, name of the
inventor, name of the patent owner of record, and the examining group to
which the reexamination is assigned.

(d) All papers or copies thereof relating to a reexamination proceeding
which have been entered of record in the patent or reexamination file
are open to inspection by the general public, and copies may be
furnished upon paying the fee therefor.

                  +++    

Under  37 CFR 1.11(c), reexamination requests with sufficient fees and
any Commissioner initiated orders made without a request will be
announced in the Official Gazette. The Reexamination Preprocessing staff
of OIPE will complete a form with the information needed to print the
notice. The forms are forwarded at the end of each week to the Office of
Publications for printing in the Official Gazette.

In addition, a record of requests filed will be located in the Patent
Search Room and in the Reexamination Preprocessing area of OIPE. Office
personnel may use the PALM system to determine if a request for
reexamination has been filed in a particular patent. The Official
Gazette notice will appear in the notice section of the Official Gazette
under the heading of Reexamination Requests Filed and will include the
name of any requestor along with the other items set forth in  37 CFR
1.11(c).

---SECTION---2230 Constructive Notice to Patent Owner

In some instances, it may not be possible to deliver mail to the patent
owner because no current address is available. If all efforts to
correspond with the patent owner fail, the reexamination proceeding will
proceed without actual notice to the patent owner. The publication in
the Official Gazette of (1) the notice of the filing of a request, or
(2) the ordering of reexamination at the initiative of the Commissioner,
will serve as constructive notice to the patent owner in such an
instance.

---SECTION---2231 Processing of Request Corrections

Any payment of insufficient request filing fee should be marked "Box
Reexam" so that the fee may be promptly forwarded to the Reexamination
Preprocessing area of the Office.  If the fee payment completes the
payment of the required fee, the request will be processed, notice will
be published in the Official Gazette, and the request will be forwarded
to the appropriate examining group for determination.

Any correction of a defect other than the fee should be directed to the
examining group where the file is located, after the reexamination has
been assigned to an examining group. The group technical support staff
will process any timely corrections and enter them in the file of the
reexamination.

---SECTION---2232 Public Access

All reexamination files are normally open to inspection by the general
public. The reexamination folders will be stored in a separate central
location (or other designated storage area)  in the patent examining
group unless being acted upon by the examiner or a communication is
being processed by the group technical support staff. In view of the
statutory requirement to conduct the reexamination proceeding with
special dispatch and because of other special circumstances, the
reexamination folder may NOT be available to the public at the following
times:

(A) The reexamination file is not available to the public when it is in
the Reexamination Preprocessing Unit.  This is because the request
papers are being actively processed and compiled into the reexamination
file wrapper.  Further, the reexamination file has not yet been captured
as a permanent record in the PTO electronic scanning database;

(B) The reexamination file is not available to the public when it is
actively being processed, e.g., when the examiner has started
consideration of some matter but an action has not been mailed. 
However, all areas should be as reasonable as possible in allowing
access and copying of the file;

(C) The reexamination file is not available to the public once the
reexamination file has been released and forwarded by the examining
group for publication of the reexamination certificate.  This would
include any reexamination files which have been selected for a quality
review check at the Office of Quality Review.  Unless prosecution is
reopened, the reexamination files are not available to the public until
the reexamination certificate issues.  This is because the reexamination
file has been put into a special format for printing purposes, and it
contains special checklists needed for printing purposes which are not
part of the record.

At times other than those identified above, the reexamination file will
normally be made available to members of the public upon request.
Inspection will be permitted in the patent examining group.  If a copy
of the file is requested, it may be ordered from the Certification
Division of the Office of Public Records (OPR), or the file wrapper may
be hand-carried by a member of the group to the Record Room and left
with a member of the Record Room staff. The file will be dispatched by
using PALM transaction 1034-921. A charge card PTOL-472 will be stapled
to the file identifying the Reexamination Control Number, Art Unit
Number, the name of the appropriate group technical support staff person
and phone number.

A member of the Record Room staff should call the appropriate group
technical support staff person when copying is completed, and the file
can then be retrieved by a member of the group. The group should
maintain a tickler record of the location of the file wrapper by some
system.

Similar procedures should be utilized in the event that an associated
patent file is requested for inspection and/or copying. Access to the
patent file wrapper should be restricted only when the examiner is
preparing an action in the reexamination folder which requires
consideration of the patent file.

[GRAPHIC]

SALE OF COPIES OF REEXAMINATION REQUESTS

Copies of reexamination requests, all cited references, and the file
wrapper and contents of the patent file for which reexamination is
requested are available at the standard charge per page. Orders for such
copies must indicate the control number assigned the reexamination
request. Orders should be addressed as follows: Box 10 Commissioner of
Patents and Trademarks, Washington, D.C. 20231, Attention: Certification
Division of OPR.

TO DETERMINE ON PALM IF A REEXAMINATION REQUEST HAS BEEN FILED FOR A
GIVEN PATENT NUMBER

Assume Patent Number Is 4104156:

-Clear PALM Terminal

-Key In: 3110 and Press Send

-When Screen Fills

Enter: PAT NO. 4104156 (In Family Name)

Press: TAB

Enter: $ (In Given Name)

Press: TAB

Enter: Y

Press:  TRANSMIT

Any reexamination for the patent number will be listed on the return
screen.

There will be about a ten (10) day lag between filing and data entry.

---SECTION---2233 Processing in Examining Group

Each examining group has designated at least one legal instrument
examiner and one backup clerk to act as a reexamination clerk and has
assigned to that person those clerical duties and responsibilities which
are unique to reexamination. Regular docket clerks will still perform
their normal duties and responsibilities in handling papers and records
during the actual reexamination process. The reexamination clerk has
sole responsibility for clerical processing until such time as the
request is either granted or denied.  If a request is granted, the
responsibility for all docket activities relating to ex parte
examination is assigned to the regular legal instrument examiner. An
examining group may designate all of its legal instrument examiners as
reexamination clerks. The examining group Special Program Examiner and
paralegal will have the responsibility to oversee clerical processing
and will serve as a resource for questions.

FEES

Under reexamination, there are generally no fees due other than for the
request and any appeal, brief, and oral hearing fees under  37 CFR
1.191, 1.192 and 1.194(b).  No fees are required for additional claims
added, for an extension of time under  37 CFR 1.550(c) (37 CFR 1.136 is
not available in reexamination), or for issue of the certificate. Any
petitions filed under  35 U.S.C. 133 or  37 CFR 1.182 or 1.183 relating
to a reexamination proceeding require fees (37 CFR1.17(h) and (l)).
Small entity reductions are available to the patent owner for the  35
U.S.C. 133 petition fee, appeal, brief, and oral hearing fees. Small
entity reductions in fees are not available for the reexamination filing
fee nor for petition fees for petitions filed under  37 CFR 1.182 and
1.183. When a fee is required in a merged proceeding (see MPEP Section 
2283 and Section  2285), only a single fee is needed even though
multiple copies of the submissions (one for each file) are required.

MAILING

A transmittal form with the requester's address will be used to forward
copies of Office actions to the requester. Whenever an Office action is
issued, a copy of this form will be made and attached to a copy of the
Office action. The use of this form removes the need to retype the
requester's address each time a mailing is required. When the patent
owner is the requester, no such form is needed.

The following steps should be taken when processing reexamination
requests in the examining groups.

(A) Report receipt of the reexamination file in the group on the PALM
terminal and forward the file to the group's reexamination clerk.

(B) Date stamp the date of receipt in the group on the reexamination
file.

(C) Charge file on the PALM terminal to the supervisory patent examiner
(SPE) of the group art unit indicated on the reexamination file and
forward the file to the supervisory patent examiner.

(D) The supervisory patent examiner promptly reviews the subject matter
of the patent in which reexamination was requested and either transfers
the request file (which should rarely occur) or assigns it to a patent
examiner. The patent examiner is informed and the request file is
returned to the group's reexamination clerk for entry of the examiner's
name into PALM.

(E) At about 6 weeks after the filing of the request, the request file
should be given to the examiner and charged to him or her on PALM.

(F) The examiner then drafts a decision on the request and returns it to
be typed on a "special" basis, normally within 8 weeks after the filing
date of the request.

(G) The typed decision is forwarded to the examiner for review.  The
examiner will sign the action (if the examiner is a primary examiner) or
forward the action to the SPE for signature (if examiner is not a
primary examiner). After signing, the file is returned to the group
technical support staff for mailing and PALM update, normally within 10
weeks after the filing date of the request.

The initial reexamination files were patent application files which had
orange tape applied to the face. The current reexamination file wrappers
are orange in color for easy identification.

---SECTION---2234 Entry of Amendments

37 CFR 1.121 Manner of making amendments.

                  +++    

(c) Amendments in reexamination proceedings:  Any proposed amendment to
the description and claims in patents involved in reexamination
proceedings must be made in accordance with Section  1.530(d).

37 CFR 1.530 Statement; amendment by patent owner.

                  +++    

(d) Amendments in reexamination proceedings.  Amendments in
reexamination proceedings are made by filing a paper, in compliance with
paragraph (d)(5) of this section, directing that specified amendments be
made.

(1) Specification other than the claims.  Amendments to the
specification, other than to the claims, may only be made as follows:

(i) Amendments must be made by submission of the entire text of a newly
added or rewritten paragraph(s) with markings pursuant to paragraph
(d)(1)(iii) of this section, except that an entire paragraph may be
deleted by a statement deleting the paragraph without presentation of
the text of the paragraph.

(ii) The precise point in the specification must be indicated where the
paragraph to be amended is located.

(iii) Underlining below the subject matter added to the patent and
brackets around the subject matter deleted from the patent are to be
used to mark the amendments being made.

(2) Claims.  Amendments to the claims may only be made as follows:

(i)(A) The amendment must be made relative to the patent claims in
accordance with paragraph (d)(8) of this section and must include the
entire text of each claim which is being proposed to be amended by the
current amendment and each proposed new claim being added by the current
amendment with markings pursuant to paragraph (d)(2)(i)(C) of this
section, except that a patent claim or previously proposed new claim
should be cancelled by a statement cancelling the patent claim or
proposed new claim without presentation of the text of the patent claim
or proposed new claim.

(B) Patent claims must not be renumbered and the numbering of any new
claims proposed to be added to the patent must follow the number of the
highest numbered patent claim.

(C) Underlining below the subject matter added to the patent and
brackets around the subject matter deleted from the patent are to be
used to mark the amendments being made.  If a claim is amended pursuant
to paragraph (d)(2)(i)(A) of this section, a parenthetical expression
"amended," "twice amended," etc., should follow the original claim
number.

(ii) Each amendment submission must set forth the status (i.e., pending
or cancelled) as of the date of the amendment, of all patent claims and
of all new claims currently or previously proposed.

(iii) Each amendment, when submitted for the first time, must be
accompanied by an explanation of the support in the disclosure of the
patent for the amendment along with any additional comments on page(s)
separate from the page(s) containing the amendment.

(3) No amendment may enlarge the scope of the claims of the patent or
introduce new matter.  No amendment may be proposed for entry in an
expired patent.  Moreover, no amendment will be incorporated into the
patent by certificate issued after the expiration of the patent.

(4) Although the Office actions will treat proposed amendments as though
they have been entered, the proposed amendments will not be effective
until the reexamination certificate is issued.

(5) The form of amendments other than to the patent drawings must be in
accordance with the following requirements.  All amendments must be in
the English language and must be legibly written either by a typewriter
or mechanical printer in at least 11 point type in permanent dark ink or
its equivalent in portrait orientation on flexible, strong, smooth,
non-shiny, durable, white paper.  All amendments must be presented in a
form having sufficient clarity and contrast between the paper and the
writing thereon to permit the direct reproduction of readily legible
copies in any number by use of photographic, electrostatic,
photo-offset, and microfilming processes and electronic reproduction by
use of digital imaging or optical character recognition.  If the
amendments are not of the required quality, substitute typewritten or
mechanically printed papers of suitable quality will be required.  The
papers, including the drawings, must have each page plainly written on
only one side of a sheet of paper.  The sheets of paper must be the same
size and either 21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9
cm. (8 1/2 by 11 inches).  Each sheet must include a top margin of at
least 2.0 cm. (3/4 inch), a left side margin of at least 2.5 cm. (1
inch), a right side margin of at least 2.0 cm. (3/4 inch), and a bottom
margin of at least 2.0 cm. (3/4 inch), and no holes should be made in
the sheets as submitted.  The lines must be double spaced, or one and
one-half spaced.  The pages must be numbered consecutively, starting
with 1, the numbers being centrally located, preferably below the text,
or above the text.

(6) Drawings.

(i) The original patent drawing sheets may not be altered.  Any proposed
change to the patent drawings must be by way of a new sheet of drawings
with the amended figures identified as "amended" and with added figures
identified as "new" for each sheet change submitted in compliance with
Section  1.84.

(ii) Where a change to the drawings is desired, a sketch in permanent
ink showing proposed changes in red, to become part of the record, must
be filed for approval by the examiner and should be in a separate paper.

(7) The disclosure must be amended, when required by the Office, to
correct inaccuracies of description and definition and to secure
substantial correspondence between the claims, the remainder of the
specification, and the drawings.

(8) All amendments to the patent must be made relative to the patent
specification, including the claims, and drawings, which is in effect as
of the date of filing of the request for reexamination.

Amendments which comply with  37 CFR 1.530(d) are entered in the
reexamination file wrapper. An amendment is given a Paper No. and is
designated by consecutive letters of the alphabet (A, B, C, etc.).

The amendment will be entered by drawing a line in red ink through (1)
any claim(s) or paragraph(s) amended and (2) the claim(s) or
paragraph(s) canceled which are not part of the patent, and the
substituted copy being indicated by reference letter.  Canceled claim(s)
or paragraph(s) which are part of the patent should not be lined
through, but rather marked with brackets (i.e., a bracket placed at the
beginning and end of each canceled claim or paragraph of the patent). 
Patent claims must not be renumbered, and the numbering of the claims
added during reexamination must follow the number of the highest
numbered patent claim.

ALL amendments in reexamination proceedings must be presented in the
form of a full copy of the text of each claim which is amended and each
paragraph of the description which is amended.  In other words, the
entire claim or paragraph must be presented for any amendment of the
claim or paragraph.

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 of the patent under reexamination.

Although amendments will be entered for purposes of examination, the
amendments are not legally effective until the reexamination certificate
is issued.

See MPEP Section  2250 for manner of making amendments by patent owner
and for examples of proper claim amendment format. For clerical handling
of amendments, see MPEP Section  2270. See also MPEP Section  2221 for
amendments included in the request by the patent owner. For entry of
amendments in a merged proceeding, see MPEP Section  2283 and Section 
2285.

---SECTION---2235 Record Systems

PALM  - MONITORING SYSTEMS

The Patent Access and Location Monitoring (PALM) system is used to
support the reexamination process. The sections below delineate PALM
related activities.

(A) Reexamination File Data on PALM  - The routine PALM retrieval
transactions are used to obtain data on reexamination files. The user
keys in the retrieval transaction code (2952, 2962, etc.) the
reexamination series code (90) and the reexamination control number.
Almost all data displayed for reexamination files has the same meaning
as for regular patent applications. Two changes should be noted. In the
first named applicant location (normally upper left corner, abbreviation
APPL), the patent number being reexamined will appear for reexamination
files. For a patent undergoing reexamination the number of the
proceeding can be determined on the 2953 retrieval screen. The pertinent
reexamination number(s) will appear in the "Details" section of the
screen as a six digit number preceded by an "R". If no "R" number is
present then no reexamination has been filed.

(B)  	Reexamination File Location Control  - The location of a
reexamination file is monitored in the same manner as regular patent
application files. All PALM transactions are equally applicable to
regular patent applications and reexamination files.

(C)  	Patent File Location Control  - The movement of patent files
related to requests for reexamination throughout the Office is monitored
by the PALM system in the normal fashion. Within the groups, the
reexamination file and patent file will be kept together, from initial
receipt until the reexamination is assigned to an examiner for
determination. At this point, the patent file will be charged to the
examiner assigned the reexamination file (use transaction 1036) and will
be kept in the examiner's room until the proceeding is terminated. After
the reexamination proceeding has been terminated, the patent file should
be forwarded with the reexamination file to the Office of Publications
via the appropriate office. Publishing Division will forward the patent
file and the reexamination file to the Record Room after printing of the
certificate.

(D)  	Reporting Events to PALM  - The PALM system is used to monitor
major events that take place in processing reexamination proceedings.
During initial processing all major pre-  ex parte examination events
are reported.  During the ex parte phase the mailing of examiner's
actions are reported as well as owner's responses thereto. The group
reexamination clerk is responsible for reporting these events using the
bar code reader (BCR) initiated 2920 cathode-ray tube (CRT) update
screen display. The events that will be reported are as follows:

(1) Determination Mailed  - Denial of request for reexamination.

(2) Determination Mailed  - Grant of request for reexamination.

(3) Petition for reconsideration of determination received.

(4) Decision on petition mailed  - Denied.

(5) Decision on petition mailed  - Granted.

(6) Owner response to determination (owner's statement)  received.

(7) Requester response to determination (requester's reply) received.

(8) The mailing of all examiner actions.

The receipt of owner's responses to examiner's actions and Office
receipt date.

Each of these events, as well as additional events reported by the
Reexamination Preprocessing Unit will be permanently recorded and
displayed in the "Contents" portion of PALM. In addition, status
representative of these events will also be displayed.

(E) Status Reports  - Various weekly "tickler" reports can be generated
for each group given the event reporting discussed above. The primary
purpose of these computer outputs is to assure that reexaminations are,
in fact, processed with "special dispatch."

(1)  	PALM Reports  - A number of automated reports generated from the
PALM system are provided to the groups at the beginning of each week.
These reports serve to indicate to the groups when certain deadlines are
approaching. Each report is subdivided by group and lists the requests
in control number sequence. The following reports have been identified.

(2)  	Requests Not Yet Received in Group -  This report serves to
indicate to a group those requests assigned to it for which
preprocessing has not been completed and which have not yet been
received in the group.  This report provides an indicator of future
workload as well as identifying potential, problem stragglers.

(3)  	Requests Not Yet Assigned to an Examiner  - This report serves to
highlight those requests which have not been assigned to an examiner by
the 6-week anniversary of their filing. Requests appearing on this
report should be located and docketed immediately.

(4)  	Requests Which Should Be Taken Up for Determination  - This report
lists those requests which have been assigned to an examiner and in
which no determination has been mailed and the 6-week anniversary of
their filing is past. Requests on this report should be taken up for
determination by the examiner.

(5)  	Requests for Which Determinations Should be Prepared - This report
lists those requests which have been assigned to an examiner and in
which no determination has been mailed and the 2-month anniversary of
their filing is past. Determinations for requests on this report should
be in the final stages of preparation.

(6)  	*Requests for Which Determinations Should Have Been Mailed - This
report lists those requests which have been assigned to an examiner and
in which no determination has been mailed and the 10-week anniversary of
their filing is past. Determinations for requests on this report should
be mailed immediately.

(7)  	*Overdue Determinations - This report lists those requests in
which no determination has been mailed and the 3-month anniversary of
their filing is past. This report should always be zero.

(8)  	Overdue Petitions for Reconsideration of a Denial  - This report
lists those requests in which the determination denied reexamination and
no petition has been received and 6 weeks have passed since the
determination was mailed. Requests on this report should be terminated.

(9)  	Overdue Owner Responses to Determinations - This report lists
those requests in which the determination ordered reexamination and the
owner has not filed a response and 10 weeks have passed since the
mailing of the determination. These requests should be taken up for
immediate ex parte action by the examiner.

(10)  	Overdue Requester Responses to Statements -  This report lists
those requests in which a proper OWNER statement was received and NO
requester reply has been received and 10 weeks have passed since the
receipt of the owner response. These requests should be taken up for
immediate action.

(11)  	*Overdue First Ex Parte Actions - This report lists those
requests in which reexamination has been ordered and a first action has
not been mailed and 6 weeks have passed since the request became
available for ex parte prosecution. These requests should be taken up
for immediate action by the examiner.

(12)  	*Overdue Action or Examiner's Answer - This report lists those
reexaminations which are up for second or subsequent action by the
examiner and no such action has been mailed and 2 months have passed
since the filing of an owner response to a previous action.

(13)  	*Overdue Advisory Action - This report lists those reexaminations
which are up for action by the examiner and no such action has been
mailed and 1 month has passed since the filing of an owner response to a
previous final action.

(14)  	*Overdue Owner Response - This report lists those requests in
which there has been an action rendered and 4 months have passed without
an owner response.

(15)  	*Overdue Certificates - This report lists those requests in which
a Notice of Intent to Issue a Reexamination Certificate has been mailed
and 3 months have passed since its mailing and no issue date has been
assigned.

(16)  	*Requests With Prolonged Prosecution - This report lists pending
requests which have not matured into a certificate and 15 months have
passed since the date of filing.

*Asterisk items require immediate action and follow-up, if appropriate.

(F)  	Historical Reporting - A variety of historical reports are
possible given the event recording described above. Thus, such
statistics as the number of requests filed and determinations made in a
specified period or number or kind of reexaminations in which an appeal
was filed can be made available.

---SECTION---2236 Assignment of Reexamination

Reexamination requests should normally be assigned to the art unit which
examines the class and subclass in which the patent to be reexamined is
currently classified as an original and to the primary examiner most
familiar with the claimed subject matter of the patent. Where no
knowledgeable primary examiner is available, the reexamination may be
assigned to an assistant examiner. In such an instance the supervisory
patent examiner must sign all actions and take responsibility for all
actions taken.

---SECTION---2237 Transfer Procedure

Although the number of reexamination requests which must be transferred
should be very small, the following procedures have been established for
an expeditious resolution of any such problems.

No transfer inquiry forms (PTO-447A) should be used in reexamination
situations. All reexamination requests in which a transfer is desired
must be hand-carried with the patent file by the supervisory patent
examiner to the supervisory patent examiner of the group art unit to
which a transfer is desired. Any conflict which cannot be resolved by
the supervisory patent examiners will be resolved by the Group Directors
involved.

If the reexamination request is accepted in the "new" art unit, the
"new" supervisory patent examiner assigns the request to an examiner,
and the "new" group's reexamination clerk PALMs in the request. In
addition, the Offices of the Special Program Examiner for both groups
must be notified of the transfer by the respective supervisory patent
examiners.

---SECTION---2238 Time Reporting

CLERICAL TIME REPORTING

Both the Program Management System (PMS) and Payroll systems now used to
monitor clerical time have been modified to report reexamination
activities. Time devoted to processing actual reexamination files in the
groups should be reported using the appropriate PMS Code and Project
Code. It should be noted that all clerical time consumed by
reexamination activities must be reported in the above manner. Such
activities as supervision, copying, typing, and docketing should be
included.

PROFESSIONAL TIME REPORTING

(A) Reexamination fees are based on full cost recovery and it is
essential that all time expended on reexamination activities be reported
accurately. Thus, directors, supervisory patent examiners (SPEs), and
board members as well as examiners should report time spent on
reexamination on their individual Time and Attendance Report using the
following Project Codes:

119051 - Used to report all activities related to a specific
reexamination proceeding up until the time ex parte prosecution is
begun.

119052 - Used to report all activities related to a specific
reexamination proceeding from the time it is taken up for first, ex
parte, action until the issuance of a certificate takes place.

Examiners and SPE's will use the above codes to report their time for
reexamination activities on the Examiner's Biweekly Time Worksheet
(PTO-690E) by making appropriate entries in the Item 16 space.

Time reported using codes 119051 and 119052 will also be reported in the
Examiner Production System as "Other" time.

(B) Examining group Special Program Examiners and paralegals will use
1407-30 as the code to report their time for reexamination activities on
the Biweekly Time Worksheet Paralegal/Special Program Examiner (PTO-690
P/S).

---SECTION---2239 Reexamination Ordered at the Commissioner's Initiative

37 CFR 1.520 Reexamination at the initiative of the Commissioner.

The Commissioner, at any time during the period of enforceability of a
patent, may determine whether or not a substantial new question of
patentability is raised by patents or printed publications which have
been discovered by the Commissioner or which have been brought to the
Commissioner's attention even though no request for reexamination has
been filed in accordance with Section  1.510. The Commissioner may
initiate reexamination without a request for reexamination pursuant to
Section  1.510. Normally requests from outside the Patent and Trademark
Office that the Commissioner undertake reexamination on his own
initiative will not be considered. Any determination to initiate
reexamination under this section will become a part of the official file
of the patent and will be given or mailed to the patent owner at the
address as provided for in Section  1.33(c).

The Commissioner may initiate reexamination without a request being
filed and without a fee being paid. Such reexamination may be ordered at
any time during the period of enforceability of the patent.

The decision to order reexamination at the Commissioner's initiative is
normally made by the Deputy Assistant Commissioner for Patent Policy and
Projects after a review of all the facts concerning the patent. It may
be made by the Commissioner of Patents and Trademarks, Deputy
Commissioner or Assistant Commissioner for Patents. The number of such
Commissioner initiated orders is expected to be very small.

If an Office employee becomes aware of an unusual fact situation in a
patent which he or she considers to clearly warrant reexamination, a
memorandum setting forth these facts along with the patent file and any
prior art patents or printed publications should be forwarded to the
Deputy Assistant Commissioner for Patent Policy and Projects through the
supervisory chain of command.

If an order to reexamine is to be issued, the decision is prepared and
signed by the Deputy Assistant Commissioner for Patent Policy and
Projects, and the patent file is forwarded to the Reexamination
Preprocessing staff for preparation of the reexamination file and
Official Gazette notice.

The decision to order reexamination made in the Office of the Deputy
Assistant Commissioner for Patent Policy and Projects is NOT mailed by
that Office. The Reexamination Preprocessing staff, once the
reexamination file has been prepared and the Control Number assigned,
will mail the decision letter to the patent owner. Prosecution will then
proceed without further communication with anyone but the owner.

If the Deputy Assistant Commissioner for Patent Policy and Projects
refuses to issue an order for reexamination, no record of any
consideration of the matter will be placed in the patent file and the
patent owner will not be notified.

The Commissioner will not normally consider requests to order
reexamination at the Commissioner's initiative received from members of
the public. If a member of the public desires reexamination, a request
and fee should be filed in accordance with  37 CFR 1.510.

---SECTION---2240 Decision on Request

35 U.S.C. 303 Determination of issue by Commissioner.

(a) Within three months following the filing of a request for
reexamination under the provisions of section 302 of this title, the
Commissioner will determine whether a substantial new question of
patentability affecting any claim of the patent concerned is raised by
the request, with or without consideration of other patents or printed
publications. On his own initiative, and any time, the Commissioner may
determine whether a substantial new question of patentability is raised
by patents and publications discovered by him or cited under the
provisions of section 301 of this title.

(b) A record of the Commissioner's determination under subsection (a) of
this section will be placed in the official file of the patent, and a
copy promptly will be given or mailed to the owner of record of the
patent and to the person requesting reexamination, if any.

(c) A determination by the Commissioner pursuant to subsection (a) of
this section that no substantial new question of patentability has been
raised will be final and nonappealable. Upon such a determination, the
Commissioner may refund a portion of the reexamination fee required
under section 302 of this title.

37 CFR 1.515 Determination of the request for reexamination.

(a) Within three months following the filing date of a request for
reexamination, an examiner will consider the request and determine
whether or not a substantial new question of patentability affecting any
claim of the patent is raised by the request and the prior art cited
therein, with or without consideration of other patents or printed
publications. The examiner's determination will be based on the claims
in effect at the time of the determination and will become a part of the
official file of the patent and will be given or mailed to the patent
owner at the address as provided for in Section  1.33(c) and to the
person requesting reexamination.

(b) Where no substantial new question of patentability has been found, a
refund of a portion of the fee for requesting reexamination will be made
to the requester in accordance with Section  1.26(c).

(c) The requester may seek review by a petition to the Commissioner
under Section  1.181 within one month of the mailing date of the
examiner's determination refusing reexamination. Any such petition must
comply with Section  1.181(b). If no petition is timely filed or if the
decision on petition affirms that no substantial new question of
patentability has been raised, the determination shall be final and
nonappealable.

Prior to making a determination on the request for reexamination, the
examiner must request a litigation computer search by the Scientific and
Technical Information Center (STIC) to check if the patent has been, or
is, involved in litigation. The "Litigation Review" box on the
reexamination file wrapper should be completed to indicate that the
review was conducted and the results thereof. A copy of the STIC search
should be hole-punched and placed on the right side of the reexamination
file. In the rare instance where the record of the reexamination
proceeding or the STIC search indicates that additional information is
desirable, guidance as to making an additional litigation search may be
obtained from the library of the Office of the Solicitor. If the patent
is or was involved in litigation, and a paper referring to the court
proceeding has been filed, reference to the paper by number should be
made in the "Litigation Review" box as "litigation; see paper #1C".  If
a litigation records search is already noted on the file, the examiner
need not repeat or update it.

If litigation has concluded or is taking place in the patent on which a
request for reexamination has been filed, the request must be promptly
brought to the attention of the Group Director (or the examining group
Special Program Examiner, where the Director has delegated this review
to him or her), who should review the decision on the request and any
examiner's action to ensure that it conforms to the current Office
litigation policy and guidelines.  See MPEP Section  2286.

35 U.S.C. 303 requires that the Commissioner determine whether or not a
"substantial new question of patentability" affecting any claim of the
patent of which reexamination is desired, is raised in the request
within a time period of 3 months following the filing date of a request. 
See also MPEP Section  2241.  Such a determination may be made with or
without consideration of other patents or printed publications in
addition to those cited in the request. No input from the patent owner
is considered prior to the determination, unless the patent owner filed
the request. See Patlex Corp. v. Mossinghoff, 771 F.2d 480, 226 USPQ 985
(Fed. Cir. 1985).

The patent claims in effect at the time of the determination will be the
basis for deciding whether a substantial new question of patentability
has been raised. (37 CFR 1.515(a)). Amendments which (1) have been
presented with the request if by the patent owner, (2) have been filed
in a pending reexamination proceeding in which the certificate has not
been issued, or (3) have been submitted in a reissue application on
which no reissue patent has been issued, will not be considered or
commented upon when deciding requests.

The decision on the request for reexamination has as its main object
either the granting or denial of an order for reexamination. This
decision is based on whether or not "a substantial new question of
patentability" is found. A final determination as to unpatentability of
the claims is not made in the decision; this determination will be made
during the examination stage of the reexamination proceedings.
Accordingly, no prima facie case of unpatentability need be found to
grant an order for reexamination. It must be noted, however, that a
decision to deny an order for reexamination is equivalent to a final
holding, subject to  37 CFR 1.515(c), that the patent claims are
patentable over the cited prior art. Where there have been prior
decisions relating to the patent, see MPEP Section  2242.

It is only necessary to establish that a substantial new question of
patentability exists as to any one of the patent claims in order to
order reexamination. In the examination stage of the reexamination,
normally all patent claims will be reexamined, even where the order has
made a finding of a substantial new question for less than all of the
patent claims. However, where there has been a prior Federal Court
decision as to some claims, see MPEP Section  2242. The decision on the
request should discuss ALL patent claims in order to inform the patent
owner of the examiner's position, so that a response thereto may be made
in the patent owner's statement.

The examiner should indicate, insofar as possible, his or her initial
position on all the issues identified in the request or by the requester
so that comment thereon may be received in the patent owner's statement
and in the requester's reply. However, the examiner SHOULD NOT make any
rejection of the claims in the order for reexamination.

The Commissioner of Patents and Trademarks has the authority to order
reexamination only in those cases which raise a substantial new question
of patentability. The substantial new question of patentability
requirement protects patentees from having to respond to, or participate
in unjustified reexaminations, Patlex Corp. v. Mossinghoff, 771 F.2d
480, 226 USPQ 985 (Fed. Cir. 1985).

SECOND OR SUBSEQUENT REQUEST FILED DURING REEXAMINATION

If a second or subsequent request for reexamination is filed (by any
party) while a reexamination is pending, the presence of a substantial
new question of patentability depends on the prior art cited by the
second or subsequent requester. If the requester includes in the second
or subsequent request prior art which raised a substantial new question
in the pending reexamination, reexamination should generally be ordered.
This is because the prior art which raised a substantial new question of
patentability resulting in an order for reexamination continues to raise
a substantial new question of patentability until the pending
reexamination is concluded. However, in aggravated situations, upon
petition by the patent owner under  37 CFR 1.182, where it appears clear
that the second or subsequent request was filed for purposes of
harassment of the patent owner, the request should be denied. The grant
of such a request would unduly prolong the conclusion of the pending
reexamination and be inconsistent with the requirement that
reexamination proceeding be conducted with special dispatch. If the
second or subsequent requester does not include the prior art which
raised a substantial new question of patentability in the pending
reexamination, reexamination may or may not be ordered depending on
whether the different prior art raises a substantial new question of
patentability. The second or subsequent request should be determined on
its own merits without reference to the pending reexamination.

Where a reexamination is pending at the time a second or subsequent
request for reexamination is to be decided, see MPEP Section  2283.

---SECTION---2241 Time for Deciding Request

The determination whether or not to reexamine must be made within 3
months following the filing date of a request. See  35 U.S.C. 303(a) and 
37 CFR 1.515(a). The examiner should pick up a request for decision
about 6 weeks after the request was filed. The decision should be mailed
within 10 weeks of the filing date of the request. Where there is a
prior reexamination pending for the same patent and reexamination has
already been ordered for that reexamination, the examiner should
immediately pick up the new request for decision, i.e., there should be
no delay of 6 weeks.  See the last portion of MPEP Section  2240 and
also see MPEP Section  2283 for multiple copending reexamination
proceedings. A determination to reexamine may be made at any time during
the period of enforceability of a patent.

---SECTION---2242 Criteria for Deciding Request

SUBSTANTIAL NEW QUESTION OF PATENT ABILITY

The presence or absence of "a substantial new question of patentability"
determines whether or not reexamination is ordered. The meaning and
scope of the term "a substantial new question of patentability" is not
defined in the statute and must be developed to some extent on a
case-by-case basis, using the case law to provide guidance as will be
discussed in this section.

If the prior art patents and printed publications raise a substantial
question of patentability of at least one claim of the patent, then a
substantial new question of patentability is present, unless the same
question of patentability has already been decided by (1) a final
holding of invalidity by a Federal Court, or (2) by the Office either in
a previous examination of the patent. A "previous examination of the
patent" is: (1) the original examination of the application which
matured into the patent; (2) the examination in a reissue application
that has resulted in a reissue of the patent; or (3) an earlier
concluded reexamination. The answer to the question of whether a
"substantial new question of patentability" exists, and therefore
whether reexamination may be had, is decided by the Commissioner, and,
as  35 U.S.C. 303 provides, that determination is final, i.e., not
subject to appeal on the merits of the decision. See In re Etter, 756
F.2d 852, 225 USPQ 1 (Fed. Cir. 1985).

A prior art patent or printed publication raises a substantial question
of patentability where there is a substantial likelihood that a
reasonable examiner would consider the prior art patent or printed
publication important in deciding whether or not the claim is
patentable. In making the determination on the request, the examiner
should consider the prior art patents and/or printed publications to
determine if there is a substantial likelihood that a reasonable
examiner would consider them important.  If the prior art patents and/or
publications would be considered important, then the examiner should
find "a substantial new question of patentability" unless the same
question of patentability has already been decided as to the claim in a
final holding of invalidity by a Federal court or by the Office in a
previous examination. For example, the same question of patentability
may have already been decided by the Office where the examiner finds the
additional prior art patents or printed publications are merely
cumulative to similar prior art already fully considered by the Office
in a previous examination of the claim.

For "a substantial new question of patentability" to be present, it is
only necessary that: (1) the prior art patents and/or printed
publications raise a substantial question of patentability regarding at
least one claim, i.e., the teaching of the (prior art) patents and
printed publications is such that a reasonable examiner would consider
the teaching to be important in deciding whether or not the claim is
patentable; and (2) the same question of patentability as to the claim
has not been decided by the Office in a previous examination or in a
final holding of invalidity by the Federal Courts in a decision on the
merits involving the claim. It is not necessary that a "  prima facie"
case of unpatentability exist as to the claim in order for "a
substantial new question of patentability" to be present as to the
claim. Thus, "a substantial new question of patentability" as to a
patent claim could be present even if the examiner would not necessarily
reject the claim as either fully anticipated by, or obvious in view of,
the prior patents or printed publications. The difference between "a
substantial new question of patentability" and a "  prima facie" case of
unpatentability is important. See generally In re Etter, 756 F.2d 852,
225 USPQ 1, 4 (Fed. Cir. 1985) (footnote 5).

In order to further clarify the meaning of "a substantial new question
of patentability" certain situations are outlined below which, if
present, should be considered when making a decision as to whether or
not "a substantial new question of patentability" is present.

POLICY IN SPECIFIC SITUATIONS

A. Prior Favorable Decisions by the Patent and Trademark Office on the
Same or Substantially Identical Prior Art in Relation to the Same
Patent. 

A "substantial new question of patentability" is not raised by the prior
art if the Office has previously considered (in an earlier examination
of the patent) the same question of patentability as to a patent claim
favorable to the patent owner based on the same prior art patents or
printed publications. In re Recreative Technologies, 83 F.3d 1394, 38
USPQ2d 1776 (Fed. Cir. 1996). 

In determining the presence or absence of "a substantial new question of
patentability," the consideration to be given to prior art patents and
printed publications cited in an earlier examination is controlled by In
re Portola Packaging Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir.
1997).

B. Prior Adverse Decisions by the Office on the Same or Substantially
Identical Prior Art in the Same Patent.

A prior decision adverse to the patentability of a claim of a patent by
the Office based upon prior art patents or printed publications would
usually mean that "a substantially new question of patentability" is
present. Such an adverse decision by the Office could arise from a
reissue application which was abandoned after rejection of the claim and
without disclaiming the patent claim.

C. Prior Adverse Reissue Application Final Decision by the Commissioner
or the Board of Patent Appeals and Interferences Based Upon Grounds
Other Than Patents or Printed Publications.

Any prior adverse final decision by the Commissioner, or the Board of
Patent Appeals and Interferences, on an application seeking to reissue
the same patent on which reexamination is requested will be considered
by the examiner when determining whether or not a "substantial new
question of patentability" is present. To the extent that such prior
adverse final decision was based upon grounds other than patents or
printed publications, the prior adverse final decision will not be
considered in determining whether or not a "substantial new question of
patentability" is present.

D. Prior Favorable or Adverse Decisions on the Same or Substantially
Identical Prior Patents or Printed Publications in Other Cases not
Involving the Patent.

While the Office would consider decisions involving substantially
identical patents or printed publications in determining whether a
"substantial new question of patentability" is raised, the weight to be
given such decisions will depend upon the circumstances. For example, if
the Office has used the same or substantially identical prior art to
reject the same or similar claims in another application or patent under
reexamination, this would be considered as being controlling in making a
determination. Similarly, if a foreign patent office or a foreign court
has used the same or substantially identical prior art to reject or
invalidate the same or similar claims, this would be considered as being
controlling in making the determination. Likewise, if a United States
Court has invalidated similar claims in another patent based on the same
or substantially identical prior patents or printed publications, this
would be considered as being controlling in making the determination.
Favorable decisions on the same or substantially identical prior patents
or printed publications in other cases would be considered but would not
be controlling.

POLICY WHERE A FEDERAL COURT DECISION HAS BEEN ISSUED ON THE PATENT

A. Final Court Holding of Validity.

When the initial question as to whether the prior art raises a
substantial new question of patentability as to a patent claim is under
consideration, the existence of a final court decision of claim validity
in view of the same or different prior art does not necessarily mean
that no new question is present, because of the different standards of
proof employed by the Federal District Courts and the Office. While the
Office may accord deference to factual findings made by the court, the
determination of whether a substantial new question of patentability
exists will be made independently of the court's decision on validity,
because it is not controlling on the Office.

B. Nonfinal Court Holding of Invalidity or Unenforceability.

A nonfinal holding of claim invalidity or unenforceability will not be
controlling on the question of whether a substantial new question of
patentability is present.

C. Final Court Holding of Invalidity or Unenforceability.

A final holding of claim   invalidity or unenforceability is controlling
on the Office. In such cases, a substantial new question of
patentability would   not be present as to the claims finally held
invalid or unenforceable.

As to A. - C. above, see Ethicon v.   Quigg, 849 F.2d 1422,7 USPQ2d 1152
(Fed. Cir. 1988).

Any situations requiring clarification should be brought to the
attention of the Office of the Deputy Assistant Commissioner for Patent
Policy and Projects.

---SECTION---2243 Claims Considered in Deciding Request

The claims in effect at the time of the determination will be the basis
for deciding whether "a substantial new question of patentability" is
present (37 CFR 1.515(a)).  While the examiner will ordinarily
concentrate on those claims for which reexamination is requested, the
finding of "a substantial new question of patentability" can be based
upon a claim of the patent other than the ones for which reexamination
is requested. For example, the request might seek reexamination of
particular claims, but the examiner is not limited to those claims and
can make a determination that "a substantial new question of
patentability" is present as to other claims in the patent without
necessarily finding "a substantial new question" with regard to the
claims requested. If a substantial new question of patentability is
found as to any claim, reexamination will be ordered and will normally
cover all claims except where some claims have been finally held invalid
in a Federal Court decision on the merits. The decision should discuss
all patent claims in order to inform the patent owner of the examiner's
position. See MPEP Section  2242 for patent claims which have been the
subject of a prior decision. Amendments or new claims will not be
considered or commented upon when deciding a request.

---SECTION---2244 Prior Art on Which the Determination Is Based

The determination whether or not "a substantial new question of
patentability" is present can be based upon any prior art patents or
printed publications. Section 303(a) of the statute and  37 CFR 1.515(a)
provide that 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 to 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. The primary source of patents and printed publications
used in making the determination are those relied on in the request.
However, subject to the Portola Packaging and   Recreative Technologies
limitations discussed in MPEP Section  2242, the examiner can also
consider the prior art of record in the patent file from the earlier
examination or a reexamination and any patents and printed publications
of record in the patent file from submissions under  37 CFR 1.501 which
are in compliance with  37 CFR 1.98 in making the determination. If the
examiner believes that additional prior art patents and publications can
be readily obtained by searching to supply any deficiencies in the prior
art cited in the request, the examiner can perform such an additional
search. Such a search should be limited to that area most likely to
contain the deficiency of the prior art previously considered and should
be made only where there is a reasonable likelihood that prior art can
be found to supply any deficiency necessary to "a substantial new
question of patentability."

The determination should be made on the claims in effect at the time the
decision is made (37 CFR 1.515(a)).

The Commissioner of Patents and Trademarks has the authority to order
reexamination only in those cases which raise a substantial new question
of patentability. The substantial new question of patentability
requirement protects patentees from having to respond to, or participate
in unjustified reexaminations, Patlex Corp. v. Mossinghoff, 771 F.2d
480, 226 USPQ 985 (Fed. Cir. 1985).

---SECTION---2245 Processing of Decision

After the examiner has prepared the decision and proofread and signed
the typed version, the reexamination file and decision are given to the
group's reexamination clerk for coordinating the clerical processing
carried out by the technical support staff.

The technical support staff then prints the heading on the decision by
using the computer terminal. If the request was made by a third party
requester, the technical support staff makes 3 copies of any prior art
documents not already supplied by or to the patent owner or requester. 
If the patent owner filed the request, only 2 copies are required.

A copy of the decision is then mailed to the patent owner and to any
third party requester, along with any required copies of prior art
documents. The original signed copy of the decision and a copy of any
prior art enclosed is made of record in the reexamination file.

The reexamination file is then returned to the special storage area in
the examining group.

---SECTION---2246 Decision Ordering Reexamination

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

If, in a determination made under the provisions of subsection 303(a) of
this title, the Commissioner 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 of this title. 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 CFR 1.525 Order to reexamine.

(a) If a substantial new question of patentability is found pursuant to
Section  1.515 or Section  1.520, the determination will include an
order for reexamination of the patent for resolution of the question. If
the order for reexamination resulted from a petition pursuant to Section 
1.515(c), the reexamination will ordinarily be conducted by an examiner
other than the examiner responsible for the initial determination under
Section  1.515(a).

(b) If the order for reexamination of the patent mailed to the patent
owner at the address as provided for in Section  1.33(c) is returned to
the Office undelivered, the notice published in the Official Gazette
under Section  1.11(c) will be considered to be constructive notice and
reexamination will proceed.

If the request is granted, the examiner will conclude that a substantial
new question of patentability has been raised by identifying all claims
and issues, the patents or printed publications relied on, and a brief
statement of the rationale supporting each new question.

In the examiner's decision, the examiner must identify at least one
substantial new question of patentability and explain how the prior art
patents or printed publications raise such a question.  The examiner
should indicate insofar as possible, his or her initial position on all
the issues identified in the request or by the requester (without
rejecting claims) so that comment thereon may be received in the patent
owner's statement and in the requester's reply.  The prior art relied on
should be listed on a form PTO-892 if it is not already listed on a form
PTO-1449 by the requester. A copy of a reference should be supplied only
where it has not been previously supplied to the patent owner and
requester.

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

(A) The prior art patent and printed publications which add some new
teaching as to at least one claim;

(B) What that new teaching is;

(C) The claims that the new teaching is directed to;

(D) That the new teaching was not previously considered nor addressed in
the prior examination of the patent or a final holding of invalidity by
the Federal Courts; and

(E) 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.

In a simple case, the examiner may adopt the reasons provided by the
requester in the discussion of the substantial new question of
patentability.

In the decision on the request, the examiner will not decide, and no
statement should be made as to, whether the claims are rejected over the
prior art patents and printed publications.  The examiner does not
decide on the question of patentability of the claims in the decision on
the request.  The examiner only decides whether there is a substantial
new question of patentability to grant the request to order
reexamination.

If arguments are presented as to grounds not based on prior art patents
or printed publications, such as those based on public use or sale, or
abandonment under  35 U.S.C. 102(c), the examiner should note that such
grounds are improper for reexamination and are not considered or
commented upon.  See  37 CFR 1.552(c).

The decision granting the request is made on a decision form and must
set forth the time periods for the patent owner and requester to file
their statement and any reply thereto.

The wording of form paragraph 22.01 should be used at the end of each
decision letter.

22.01 New Question of Patentability

A substantial new question of patentability affecting claim   [1] of
United States Patent Number [2] is raised by the request for
reexamination.

Extensions of time under  37 CFR 1.136(a) will not be permitted in these
proceedings because the provisions of  37 CFR 1.136 apply only to "an
applicant" and not to parties in a reexamination proceeding. 
Additionally,  35 U.S.C. 305 requires that reexamination proceedings
"will be conducted with special dispatch" (37 CFR 1.550(a)).  Extension
of time in reexamination proceedings are provided for in  37 CFR
1.550(c).

Upon determination that a substantial new question of patentability is
present, either pursuant to a request under  35 U.S.C. 302 and  37 CFR
1.515, or a sua sponte determination under  35 U.S.C. 303(a), second
sentence, and  37 CFR 1.520, the Commissioner issues an order to
reexamine. The statutory wording is that:

[T]he determination [that a substantial new question of patentability is
raised] will include an order for reexamination of the patent for
resolution of the question. [ 35 U.S.C. 304, first sentence]

PETITION TO VACATE THE ORDER GRANTING REEXAMINATION

A substantive determination by the Commissioner to institute
reexamination pursuant to a finding that the prior art patents or
printed publications raise a substantial new question of patentability
is not subject to review by petition or otherwise.  See Joy Mfg. Co. v.
Nat'l Mine Serv. Co., Inc., 810 F.2d 1127, 1 USPQ2d 1627 (Fed. Cir.
1987).  Note further the decision of Patlex Corp. v. Quigg, 6 USPQ2d
1296, 1298 (D.D.C. 1988) (the legislative scheme leaves the
Commissioner's  35 U.S.C. 303 determination entirely to his discretion
and not subject to judicial review).  Accordingly, neither the patent
owner nor the requester has a right to petition, or request
reconsideration of, a finding that prior art patents or printed
publications raise a substantial new question.  There is no right to
petition such a finding even if the finding of a substantial new
question is based on reasons other than those urged by the requester (or
based on less than all the grounds urged by the requester).  Where the
examiner determines that a date of a reference is early enough such that
the reference constitutes prior art, that determination is not
petitionable (with respect to vacating the examiner's finding of a
substantial new question).  Where the examiner determines that a
reference is a printed publication (i.e., that the criteria for
publication has been satisfied), that determination is also not
petitionable.  These matters cannot be questioned with respect to
vacating the order granting reexamination.  Rather, these matters can be
argued by the patent owner and appealed during the examination phase of
the reexamination proceeding.

A petition under  37 CFR 1.181 may, however, be filed to vacate an ultra
vires reexamination order, such as where the order for reexamination is
not based on prior art patents and printed publications.  In cases where
no discretion to grant a request for reexamination exists, a petition to
vacate the decision to grant, or a request for reconsideration, will be
entertained.  "Appropriate circumstances" under  37 CFR 1.181(a)(3)
exist to vacate the order granting reexamination where, for example:

(A) the reexamination order is not based on prior art patents or printed
publications;

(B) all claims of the patent were held to be invalid by a final decision
of a Federal Court;

(C) reexamination was ordered for the wrong patent;

(D) reexamination was ordered based on a duplicate copy of the request;
or

(E) the reexamination order is based wholly on prior art previously
considered in an earlier concluded examination of the patent by the
Patent and Trademark Office (e.g., the application which matured into
the patent, a prior reexamination, an interference proceeding).

As to (E) above, the decisions of In re Portola Packaging Inc., 110 F.3d
786, 42 USPQ2d 1295 (Fed. Cir. 1997) and Recreative Technologies Corp.,
83 F.3d 1394, 38 USPQ2d 1776 (Fed. Cir. 1996) are to be noted.  See the
discussion in MPEP Section  2242 as to the criteria for vacating a
reexamination order in view of the decisions.

PRIOR ART SUBMITTED AFTER THE ORDER

Any prior art citations under  37 CFR 1.501 submitted after the date of
the decision on the order should be retained in a separate file by the
reexamination clerk and stored until the reexamination proceeding is
terminated, at which time the prior art citation is then entered of
record on the patent file.  See MPEP Section  2206.

---SECTION---2247 Decision on Request for Reexamination, Request Denied

The request for reexamination will be denied if a substantial new
question of patentability is not found based on patents or printed
publications.

If the examiner concludes that no substantial new question of
patentability has been raised, the examiner should indicate why the
claims are clearly patentable in a manner similar to that used to
indicate reasons for allowance (MPEP Section  1302.14). The examiner
should also respond to the substance of each argument raised by the
requester which is based on patents or printed publications. If
arguments are presented as to grounds not based on prior patents or
printed publications, such as those based on public use or sale, or
abandonment under  35 U.S.C. 102(c), the examiner should note that such
grounds are improper for reexamination and are not considered or
commented upon. See  37 CFR 1.552(c).

A copy of any denied request and the decision thereon are made part of
the official patent file.

If the denial of the request is not overturned by a petition decision, a
refund will be made to the requester under  37 CFR 1.26(c) after the
period for petition has expired.

Use form paragraph 22.02 as the introductory paragraph in a decision
denying reexamination.

22.02 No New Question of Patentability

No substantial new question of patentability is raised by the request
for reexamination and prior art cited therein for the reasons set forth
below.

---SECTION---2247.01 Examples of Decisions on Request 	for Reexamination

Examples of decisions on requests are provided below.

[GRAPHIC]

[GRAPHIC]

Example (2):  Decision Denying Request for Reexamination[GRAPHIC]

[GRAPHIC]

---SECTION---2248 Petition From Denial of Request

37 CFR 1.515 Determination of the request for reexamination.

                  +++    

(c) The requester may seek review by a petition to the Commissioner
under Section  1.181 within one month of the mailing date of the
examiner's determination refusing reexamination. Any such petition must
comply with Section  1.181(b). If no petition is timely filed or if the
decision on petition affirms that no substantial new question of
patentability has been raised, the determination shall be final and
nonappealable.

PROCESSING OF PETITION UNDER 37 CFR 1.515(c)

Once the request for reexamination has been denied, the reexamination
file will be stored in the storage area established by the group for
reexamination files, to await the possibility of a petition seeking
review of the examiner's determination refusing reexamination. If no
petition is filed within one (1) month, the file is forwarded to the
Office of Finance for a refund. If a petition is filed, it is forwarded
(together with the reexamination file) to the office of the Group
Director for decision.

Where a petition is filed, the Group Director will review the examiner's
determination that a substantial new question of patentability has not
been raised. The director's review will be de novo. Each decision by the
Group Director will conclude with the paragraph:

This decision is final and nonappealable.  37 CFR 1.515(c). No further
communication on this matter will be acknowledged or considered.

If the petition is granted, the decision of the Group Director should
include a sentence setting a 2-month period for filing a statement under 
37 CFR 1.530; the reexamination file will then be returned to the
supervisory patent examiner of the art unit that will handle the
reexamination for consideration of reassignment to another examiner.

Reassignment will be the general rule. Only in exceptional circumstances
where no other examiner is available and capable to give a proper
examination will the case remain with the original examiner. If the
original determination is signed by the supervisory patent examiner, the
reexamination ordered by the director will be assigned to a primary
examiner.

The requester may seek review of a denial of a request for reexamination
by petitioning the Commissioner under  37 CFR 1.515(c) and 1.181 within
1 month of the mailing date of the decision denying the request for
reexamination. A request for an extension of the time period to file a
petition from the denial of a request for reexamination can only be
entertained by filing a petition under  37 CFR 1.183 with appropriate
fee to waive the time provisions of  37 CFR 1.515(c). Except for the
limited exception described in MPEP Section  2246, no petition may be
filed requesting review of a decision granting a request for
reexamination even if the decision grants the request for reasons other
than those advanced by requester or as to claims other than those for
which requester sought reexamination. No right to review exists if
reexamination is ordered in such a case because all claims will be
reexamined in view of all prior art during the reexamination under  37
CFR 1.550.

After the time for petition has expired without a petition having been
filed, or a petition has been filed and the decision thereon affirms the
denial of the request, a partial refund of the filing fee for requesting
reexamination will be made to the requester. (35 U.S.C. 303(c) and  37
CFR 1.26(c)). A decision on a petition is final and is not appealable.

---SECTION---2249 Patent Owner's Statement

37 CFR 1.530 Statement; amendment by patent owner.

(a) Except as provided in Section  1.510(e), no statement or other
response by the patent owner shall be filed prior to the determinations
made in accordance with Section Section  1.515 or 1.520. If a premature
statement or other response is filed by the patent owner it will not be
acknowledged or considered in making the determination.

(b) The order for reexamination will set a period of not less than two
months from the date of the order within which the patent owner may file
a statement on the new question of patentability including any proposed
amendments the patent owner wishes to make.

(c) Any statement filed by the patent owner shall clearly point out why
the subject matter as claimed is not anticipated or rendered obvious by
the prior art patents or printed publications, either alone or in any
reasonable combinations. Any statement filed must be served upon the
reexamination requester in accordance with Section  1.248.

                  +++    

The patent owner has no right to file a statement subsequent to the
filing of the request but prior to the order for reexamination. Any such
premature statement will not be acknowledged nor considered by the
Office when making the decision on the request. See MPEP Section  2225
and Patlex Corp. v. Mossinghoff, 771 F.2d 480, 226 USPQ 985 (Fed. Cir.
1985).

If reexamination is ordered, the decision will set a period of not less
than 2 months within which period the patent owner may file a statement
and any narrowing amendments to the patent claims. If necessary, an
extension of time beyond the 2 months may be requested under  37 CFR
1.550(c) by the patent owner. Such request is decided by the Group
Director.

Any statement filed must clearly point out why the patent claims are
believed to be patentable, considering the cited prior art patents or
printed publications alone or in any reasonable combination.

A copy of the statement must be served by the patent owner on the
requester, unless the request was filed by the patent owner.

In the event the decision is made to reexamine, the patent statute (35
U.S.C. 304) provides that the owner will have a period, not less than 2
months (minimum time), to file a statement directed to the issue of
patentability. Since the 2-month period is the minimum provided by
statute, first extensions may be granted up to one (1) month based upon
good and sufficient reasons. Further extensions should be granted only
in the most extraordinary situations; e.g., death or incapacitation of
the representative or owner.

Lack of proof of service poses a problem especially where the patent
owner fails to indicate that he or she has served the requester in the
statement subsequent to the order for reexamination (37 CFR 1.530(c)).
In this situation, the Reexamination Clerk should immediately contact
the patent owner by telephone to see whether the indication of proof of
service was inadvertently omitted from the patent owner's response. If
it was, the patent owner should be advised to submit a supplemental
paper indicating the manner and date of service on requester. If the
patent owner cannot be contacted, the Reexamination Clerk will then
contact the requester to verify that service has in fact been made by
the patent owner and indicate that acknowledgment of proof of service
should accompany requester's reply (37 CFR 1.248(b)(1)). If the 2-month
period for response under  37 CFR 1.530 has expired and requester has
not been served, the patent owner's statement is considered
inappropriate (37 CFR 1.248) and may be denied consideration; see MPEP
Section  2267.

See also MPEP Section  2266.03 for further discussion as to the patent
owner providing service on the third party requester.

It should be noted that the period for response by requester for a reply
under  37 CFR 1.535 is 2 months from the owner's service date and not 2
months from the date the patent owner's statement was received in the
Patent and Trademark Office.

---SECTION---2250 Amendment by Patent Owner

37 CFR 1.121 Manner of making amendments.

                  +++    

(c) Amendments in reexamination proceedings:  Any proposed amendment to
the description and claims in patents involved in reexamination
proceedings must be made in accordance with Section  1.530(d).

37 CFR 1.530 Statement; amendment by patent owner.

                  +++    

(d) Amendments in reexamination proceedings.  Amendments in
reexamination proceedings are made by filing a paper, in compliance with
paragraph (d)(5) of this section, directing that specified amendments be
made.

(1) Specification other than the claims.  Amendments to the
specification, other than to the claims, may only be made as follows:

(i) Amendments must be made by submission of the entire text of a newly
added or rewritten paragraph(s) with markings pursuant to paragraph
(d)(1)(iii) of this section, except that an entire paragraph may be
deleted by a statement deleting the paragraph without presentation of
the text of the paragraph.

(ii) The precise point in the specification must be indicated where the
paragraph to be amended is located.

(iii) Underlining below the subject matter added to the patent and
brackets around the subject matter deleted from the patent are to be
used to mark the amendments being made.

(2) Claims.  Amendments to the claims may only be made as follows:

(i)(A) The amendment must be made relative to the patent claims in
accordance with paragraph (d)(8) of this section and must include the
entire text of each claim which is being proposed to be amended by the
current amendment and each proposed new claim being added by the current
amendment with markings pursuant to paragraph (d)(2)(i)(C) of this
section, except that a patent claim or previously proposed new claim
should be cancelled by a statement cancelling the patent claim or
proposed new claim without presentation of the text of the patent claim
or proposed new claim.

(B) Patent claims must not be renumbered and the numbering of any new
claims proposed to be added to the patent must follow the number of the
highest numbered patent claim.

(C) Underlining below the subject matter added to the patent and
brackets around the subject matter deleted from the patent are to be
used to mark the amendments being made.  If a claim is amended pursuant
to paragraph (d)(2)(i)(A) of this section, a parenthetical expression
"amended," "twice amended," etc., should follow the original claim
number.

(ii) Each amendment submission must set forth the status (i.e., pending
or cancelled) as of the date of the amendment, of all patent claims and
of all new claims currently or previously proposed.

(iii) Each amendment, when submitted for the first time, must be
accompanied by an explanation of the support in the disclosure of the
patent for the amendment along with any additional comments on page(s)
separate from the page(s) containing the amendment.

(3) No amendment may enlarge the scope of the claims of the patent or
introduce new matter.  No amendment may be proposed for entry in an
expired patent.  Moreover, no amendment will be incorporated into the
patent by certificate issued after the expiration of the patent.

(4) Although the Office actions will treat proposed amendments as though
they have been entered, the proposed amendments will not be effective
until the reexamination certificate is issued.

(5) The form of amendments other than to the patent drawings must be in
accordance with the following requirements.  All amendments must be in
the English language and must be legibly written either by a typewriter
or mechanical printer in at least 11 point type in permanent dark ink or
its equivalent in portrait orientation on flexible, strong, smooth,
non-shiny, durable, white paper.  All amendments must be presented in a
form having sufficient clarity and contrast between the paper and the
writing thereon to permit the direct reproduction of readily legible
copies in any number by use of photographic, electrostatic,
photo-offset, and microfilming processes and electronic reproduction by
use of digital imaging or optical character recognition.  If the
amendments are not of the required quality, substitute typewritten or
mechanically printed papers of suitable quality will be required.  The
papers, including the drawings, must have each page plainly written on
only one side of a sheet of paper.  The sheets of paper must be the same
size and either 21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9
cm. (8 1/2 by 11 inches).  Each sheet must include a top margin of at
least 2.0 cm. (3/4 inch), a left side margin of at least 2.5 cm. (1
inch), a right side margin of at least 2.0 cm. (3/4 inch), and a bottom
margin of at least 2.0 cm. (3/4 inch), and no holes should be made in
the sheets as submitted.  The lines must be double spaced, or one and
one-half spaced.  The pages must be numbered consecutively, starting
with 1, the numbers being centrally located, preferably below the text,
or above the text.

(6) Drawings.

(i) The original patent drawing sheets may not be altered.  Any proposed
change to the patent drawings must be by way of a new sheet of drawings
with the amended figures identified as "amended" and with added figures
identified as "new" for each sheet change submitted in compliance with
Section  1.84.

(ii) Where a change to the drawings is desired, a sketch in permanent
ink showing proposed changes in red, to become part of the record, must
be filed for approval by the examiner and should be in a separate paper.

(7) The disclosure must be amended, when required by the Office, to
correct inaccuracies of description and definition and to secure
substantial correspondence between the claims, the remainder of the
specification, and the drawings.

(8) All amendments to the patent must be made relative to the patent
specification, including the claims, and drawings, which is in effect as
of the date of filing of the request for reexamination.

Amendments to the patent (one which has not expired) may be filed by the
patent owner.  See MPEP Section  2221. Such amendments, however, may not
enlarge the scope of a claim of the patent or introduce new matter.
Amended or new claims which broaden or enlarge the scope of a claim of
the patent should be rejected under  35 U.S.C. 305. The test for when an
amended or "new claim enlarges the scope of an original claim under  35
U.S.C. 305 is the same as that under the 2-year limitation for reissue
applications adding enlarging claims under  35 U.S.C. 251, last
paragraph." In re Freeman, 30 F.3d 1459, 1464, 31 USPQ2d 1444, 1447
(Fed. Cir. 1994). See MPEP Section  2258 for a discussion of enlargement
of claim scope.  For handling of new matter, see MPEP Section  2270. 
Additional claims may be added by amendment in a reexamination
proceeding, without any fee.  Amendments proposed in a reexamination
will normally be entered and be considered to be entered for purposes of
prosecution before the Office (if they are timely and comply with the
rules); however, the amendments do not become effective in the patent
until the reexamination certificate under  35 U.S.C. 307 is issued.

No amendment will be permitted where the certificate issues after
expiration of the patent.  See  37 CFR 1.530 (d)(3). The patent
expiration date for a utility patent, for example, is determined by
taking into account the term of the patent, whether maintenance fees
have been paid for the patent, and whether any disclaimer was filed as
to the patent to shorten its term.  Any other relevant information
should also be taken into account.

Amendment Entry  - Amendments which comply with  37 CFR 1.530(d) will be
entered in the reexamination file wrapper. An amendment will be given a
Paper Number and will be designated by consecutive letters of the
alphabet (A, B, C, etc.). The amendment will be entered by drawing a
line in red ink through the claim(s) or paragraph(s) canceled or
amended, and the substituted copy being indicated by reference letter. 
See MPEP Section  2234.

I. MANNER OF MAKING AMENDMENTS IN REEXAMINATION PROCEEDINGS

The provisions of  37 CFR 1.530(d) apply to amendments in reexamination
proceedings.

A. The Specification

37 CFR 1.530(d)(1) relates to the manner of making amendments to the
reexamination "specification" (other than the claims).  It is not to be
used for making amendments to the claims or the drawings.

37 CFR 1.530(d)(1)(i) requires that all amendments, which include any
deletions or additions, must be made by submission of a copy of each
rewritten paragraph with markings (brackets and underling), except that
an entire paragraph of specification text may be deleted from the
specification by a statement deleting the paragraph without the
presentation of the text of the paragraph.  37 CFR 1.530(d)(1)(i) also
requires that all paragraphs which are added to the specification must
be submitted as completely underlined.

37 CFR 1.530(d)(1)(ii) requires that the precise point where each
amendment is to be made must be indicated.

37 CFR 1.53(d)(1)(iii) defines the markings set forth in  37 CFR
1.530(d)(1)(ii) as being brackets for deletion and underlining for
addition.  All bracketing and underlining is made in comparison to the
original patent; not in comparison with the prior amendment.

Where a change is made in one sentence, paragraph or page of the patent,
and the change increases or decreases the size of the sentence,
paragraph or page, this will have no effect on the body of the
reexamination "specification" (the copy of the patent).  This is because
all insertions are made as blocked additions of paragraphs, which are
not physically inserted within the specification papers.  Rather, each
blocked paragraph is assigned a letter and number, and a caret written
in the specification papers indicates where the blocked paragraph is to
be incorporated.  Therefore, a reexamination patent owner need not be
concerned with page formatting considerations when presenting amendments
to the Office.

B. The Claims

37 CFR 1.530(d)(2) relates to the manner of making amendments to the
claims in a reexamination proceeding.  It is not to be used for making
amendments to the remainder of the specification or to the drawings.

37 CFR 1.530(d)(2)(i)(A) requires that:

(A) for each claim that is proposed to be amended by the amendment being
submitted (the current amendment), the entire text of the claim must be
presented with appropriate markings;

(B) for each proposed new claim which is added in the reexamination by
the amendment being submitted (the current amendment), the entire text
of the proposed new claim must be presented and it must be underlined
throughout;

(C) a patent claim is canceled by a direction to cancel that claim,
there is no need to present the text of the patent claim surrounded by
brackets; and

(D) a proposed new claim (previously added in the reexamination) is
canceled by a direction to cancel that claim.

37 CFR 1.530(d)(2)(i)(B) states that original patent claims may not be
renumbered.  A patent claim retains its number even if it is canceled in
the reexamination proceeding, and the numbering of any added claims must
begin after the last original patent claim.

37 CFR 1.530(d)(2)(i)(C) identifies the type of markings required in the
claim to be amended as underlining for added material and single
brackets for material deleted.

In accordance with  37 CFR 1.530(d)(2)(ii), each amendment submitted
must set forth the status of all patent claims and all added claims as
of the date of the submission.  The status to be set forth is whether
the claim is pending, or canceled.  The failure to submit the claim
status will generally result in a notification to the patent owner of an
informal response (see MPEP Section  2266.02) prior to final rejection. 
Such an amendment after final rejection will not be entered.

In accordance with  37 CFR 1.530(d)(2)(iii), each claim amendment must
be accompanied by an explanation of the support in the disclosure of the
patent for the amendment (i.e., support for the changes made in the
claim(s), support for any insertions and deletions).  The failure to
submit an explanation will generally result in a notification to the
patent owner that the amendment prior to final rejection is not
completely responsive since the failure to set forth the support in the
disclosure goes to the merits of the case (see MPEP Section  2266.01). 
Such an amendment after final rejection will not be entered.

C. The Drawings

With respect to amendment of the drawings in a reexamination proceeding,
see MPEP Section  2250.01.

Form paragraph 22.12 may be used to advise patent owner of the proper
manner of making amendments in a reexamination proceeding.

22.12 Amendments Proposed in a Reexamination - 37 CFR 1.530(d)

Patent owner is notified that any proposed amendment to the
specification and/or claims in this reexamination proceeding must comply
with  37 CFR 1.530(d).

Examiner Note:

This paragraph may be used in the order granting reexamination and/or in
the first Office action to advise patent owner of the proper manner of
making amendments in a reexamination proceeding.

Form paragraph 22.13 may be used to notify patent owner in a
reexamination proceeding that a proposed amendment in the proceeding
filed prior to final rejection does not comply with  37 CFR 1.530(d).

22.13 Improper Amendment in a Reexamination - 37 CFR 1.530(d)

The amendment filed [1] proposes amendments to [2] that do not comply
with  37 CFR 1.530(d), which sets forth the manner of making amendments
in reexamination proceedings.  A supplemental paper correctly proposing
amendments in the reexamination proceeding is required.

A shortened statutory period for response to this letter is set to
expire ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing
date of this letter.  If patent owner fails to timely correct this
informality, the amendment will be held not to be an appropriate
response, the present reexamination proceeding will be terminated, and a
reexamination certificate will issue.  37 CFR 1.550(d).

Examiner Note:

This paragraph may be used for any  37 CFR 1.530(d) informality as to a
proposed amendment submitted in a reexamination proceeding prior to
final rejection.  After final rejection, the amendment should not be
entered and patent owner informed of such in an advisory Office action
using Form PTOL 467.

The cover sheet to be used for mailing the notification to the patent
owner will be PTOL-473.

As an alternative to using form paragraph 22.13, it would also be
appropriate to use form PTOL-475, box 4.

Note that if the informal amendment is submitted after final rejection,
form paragraph 22.13 and form PTOL-475, box 4 should not be used. 
Rather an advisory Office action (using form PTOL-467) should be issued
indicating that the amendment was not entered.  Box 4(d) of PTOL-467
should be checked, and in box 10, it should be explained that the
amendment was not entered because it does not comply with  37 CFR
1.530(d), which sets forth the manner of making amendments in
reexamination proceedings.

II. ALL CHANGES ARE MADE VIS-A-VIS THE PATENT BEING REEXAMINED

When a reexamination certificate is printed, all underlined matter is
printed in italics and all brackets are printed as they were inserted in
the proceeding in order to thereby show exactly which additions and
deletions have been made in the patent via the reexamination proceeding. 
In accordance with  37 CFR 1.530(d)(8), all amendments to the patent
being reexamined must be made relative to the patent specification in
effect as of the date of the filing of the request for reexamination. 
The patent specification includes the claims and drawings.  If there was
a prior change to the patent (made via a prior reexamination
certificate, reissue of the patent, certificate of correction, etc.),
the first amendment must be made relative to the patent specification as
changed by the prior proceeding or other mechanism for changing the
patent.  All amendments subsequent to the first amendment must also be
made relative to the patent specification in effect as of the date of
the filing of the request for reexamination, and not relative to the
prior amendment.

III. EXAMPLES

A substantial number of problems arise in the Office because of improper
submission of proposed amendments in reexamination proceedings.  The
following examples are provided to assist in the preparation of proper
proposed amendments in reexamination proceedings.

(A) Original Patent Description Or Patent Claim Amended

(1) Specification - submit a copy of the entire paragraph (of the
specification of the patent) being amended with underlining and
bracketing.  Thus, the amendment would be presented as follows:

Replace the paragraph beginning at column 4, line 23 with the following:

Scanning [is] are controlled by clocks which are, in turn, controlled
from the display tube line synchronization.  The signals resulting from
scanning the scope of the character are delivered in parallel, then
converted into serial mode through a shift register, wherein the shift
signal frequency is controlled by a clock that is controlled from the
display tube line synchronization.

(2) Claims - for changes to the patent claims, one must submit a copy of
the entire patent claim with the amendments shown by underlining and
bracketing.  Thus, the amendment would be presented as follows:

Amend claim 6 as follows:

Claim 6.  The apparatus of claim [5] 1 wherein the [first] second
piezoelectric element is parallel to the [second] third piezoelectric
element.

If the dependency of any original patent claim is to be changed by
amendment, it is proper to make that original patent claim dependent
upon a later filed higher numbered claim.

(B) Cancellation Of Entire Claim(s)

(1) Original patent claim canceled - in writing, direct cancellation of
the entire patent claim.

Cancel claim 6.

(2) Proposed new claim (previously added in the reexamination) canceled
- in writing, direct cancellation of the entire claim.

Cancel claim 15.

(C) Presentation Of New Claims

Each proposed new claim (i.e., a claim not found in the patent, that is
newly presented in the reexamination proceeding) should be presented
with underlining throughout the claim.

Claim 7.  The apparatus of claim 5 further comprising electrodes
attaching to said opposite faces of the second and third piezoelectric
elements.

Even though an original claim may have been canceled, the numbering of
the original claims does not change.  Accordingly, any added claims are
numbered beginning with the next higher number than the number of claims
in the original patent.  If new claims have been added to the
reexamination proceeding which are later canceled prior to the issuance
of the reexamination certificate, the examiner will renumber, at the
time of preparing the NIRC for subsequent issuance of the certificate,
any remaining new claims in numerical order to follow the highest number
of the claims in the original patent.

A claim number previously assigned to a new claim that has been canceled
should not be reassigned to a different new claim during the
reexamination proceeding.  For example, if new claim 5 added in a prior
amendment is canceled in a later amendment, a different new claim added
in a later amendment during the reexamination proceeding would be claim
6.  Of course, at the time of preparing the NIRC, claim 6 would be
renumbered for issue of the reexamination certificate as claim 5.

(D) Amendment Of New Claims

An amendment of a new claim (i.e., a claim not found in the patent, that
was previously presented in the reexamination proceeding) must present
the entire text of the new claim containing the amendatory material, and
it must be underlined throughout the claim.  The presentation cannot
contain any bracketing or other indication of what was in the previous
version of the claim.  This is because all changes in the reexamination
are made vis-a-vis the original patent, and not in comparison with any
prior amendment.  Although the presentation of the amended claim does
not contain any indication of what is changed from a previous version of
the claim, patent owner must point out what is changed, in the "Remarks"
portion of the amendment.  Also, as per  37 CFR 1.530(d)(2)(iii), each
change made in the claim must be accompanied by an explanation of the
support in the disclosure of the patent (i.e., the reexamination
specification) for the change.

(E) Amendment Of Original Patent Claims More Than Once

The following illustrates proper claim amendment of original patent
claims in reexamination proceedings:

(1) Patent claim.

Claim 1.  A cutting means having a handle portion and a blade portion.

(2) Proper first amendment format.

Claim 1.  A [cutting means] knife having a bone handle portion and a
notched blade portion.

(3) Proper second amendment format.

Claim 1.  A [cutting means] knife having a handle portion and a serrated
blade portion.

Note that the second amendment must include (1) the changes previously
presented in the first amendment; i.e., [cutting means] knife, as well
as (2) the new changes presented in the second amendment; i.e.,
serrated.

The word bone was presented in the first amendment and is now to be
deleted in the second amendment.  Thus, "bone" is NOT to be shown in
brackets in the second amendment.  Rather, the word "bone" is simply
omitted from the claim, since "bone" never appeared in the patent.

The word notched which was presented in the first amendment is replaced
by the word serrated in the second amendment.  The word notched is being
deleted in the second amendment and did not appear in the patent;
accordingly, "notched" is not shown in any form in the claim.  The word
serrated is being added in the second amendment, and accordingly,
"serrated" is added to the claim and is underlined.

It should be understood that in the second amendment, the deletions of
"notched" and "bone" are not changes from the original patent claim text
and therefore, are not shown in the second amendment.  In both the first
and the second amendments, the entire claim is presented only with the
changes from the original patent text.

If the patent expires during the ex parte reexamination procedure and
the patent claims have been amended, the Office will hold the amendments
as being improper and all subsequent reexamination will be on the basis
of the unamended patent claims. This procedure is necessary since no
amendments will be incorporated into the patent by certificate after the
expiration of the patent.

For clerical handling of amendments, see MPEP Section  2270.

As to amendments in a merged proceeding, see MPEP Section  2283 and
Section  2285.

For handling a dependent claim in reexamination proceedings, see MPEP
Section  2260.01.

---SECTION---2250.01 Correction of Patent Drawings

37 CFR 1.530 Statement; amendment by patent owner.

                  +++    

(d) Amendments in reexamination proceedings.  Amendments in
reexamination proceedings are made by filing a paper, in compliance with
paragraph (d)(5) of this section, directing that specified amendments be
made.

                  +++    

(6) Drawings.

(i) The original patent drawing sheets may not be altered.  Any proposed
change to the patent drawings must be by way of a new sheet of drawings
with the amended figures identified as "amended" and with added figures
identified as "new" for each sheet change submitted in compliance with
Section  1.84.

(ii) Where a change to the drawings is desired, a sketch in permanent
ink showing proposed changes in red, to become part of the record, must
be filed for approval by the examiner and should be in a separate paper.

                  +++    

In the reexamination proceeding, the copy of the patent drawings
submitted pursuant to  37 CFR 1.510(b)(4) will be used for reexamination
purposes, provided no change whatsoever is made to the drawings. If
there is to be ANY change in the drawings, a new sheet of drawings for
each sheet changed must be submitted.  The change may NOT be made on the
original patent drawings.

37 CFR 1.530(d)(6) sets forth the manner of making amendments to the
drawings.  Under  37 CFR 1.530(d)(6)(i), amendments to the original
patent drawing sheet are not permitted and any change to the patent
drawings must be in the form of a new sheet of drawings.  Any amended
figure(s) must be identified as "amended" and any added figure(s) must
be identified as "new" for each sheet of drawings that has changed and
for each added sheet of drawings.

Where the patent owner wishes to change/amend the drawings, the patent
owner should submit a sketch in permanent ink showing proposed
change(s)/amendment(s) in red, for approval by the examiner.  See  37
CFR 1.530(d)(6)(ii).  The submitted sketch should be presented as a
separate paper, and it will be made part of the record.  Once the sketch
is approved, sheets of substitute formal drawings must be submitted for
each drawing sheet that is to be changed/amended.  After receiving the
new sheets of drawings from the patent owner, the examiner will submit
them for approval of the draftsman.  The new sheets of drawings must be
submitted and approved prior to the final review of the reexamination by
the Group Special Program Examiner (see MPEP Section  2289) and prior to
forwarding the reexamination file to the Office of Publications for
issuance of the reexamination certificate.  The new sheets of drawings
should be entered in the reexamination file. 

---SECTION---2251 Reply by Requester

37 CFR 1.535 Reply by requester.

A reply to the patent owner's statement under Section  1.530 may be
filed by the reexamination requester within two months from the date of
service of the patent owner's statement. Any reply by the requester must
be served upon the patent owner in accordance with Section  1.248. If
the patent owner does not file a statement under Section  1.530, no
reply or other submission from the reexamination requester will be
considered.

If the patent owner files a statement in a timely manner, the requester
is given a period of 2 months from the date of service to reply. Since
the statute,  35 U.S.C. 304,  provides this time period, there will be
no extensions of time granted.

The reply need not be limited to the issues raised in the statement. The
reply may include additional prior art patents and printed publications
and may raise any issue appropriate for reexamination.

If no statement is filed by the patent owner, no reply is permitted from
the requester.

A copy of any reply by the requester must be served on the patent owner.
See MPEP Section  2266.03 for further discussion as to the third party
requester providing service on the patent owner.

The requester is not permitted to file any further papers after his or
her reply to the patent owner's statement. Any further papers will not
be considered and will be returned to the requester. The patent owner
cannot file papers on behalf of the requester and thereby circumvent the
rules.

---SECTION---2252 Consideration of Statement and Reply

37 CFR 1.540 Consideration of responses.

The failure to timely file or serve the documents set forth in Section 
1.530 or in Section  1.535 may result in their being refused
consideration. No submissions other than the statement pursuant to
Section  1.530 and the reply by the requester pursuant to Section  1.535
will be considered prior to examination.

Although  37 CFR 1.540 would appear to be discretionary in stating that
late responses "may result in their being refused consideration," patent
owners and requesters can expect consideration to be refused if the
statement and/or reply is not timely filed.  37 CFR 1.540 restricts the
number and kind of submissions to be considered prior to examination to
those expressly provided for in  37 CFR 1.530 and  37 CFR 1.535.
Untimely submissions will ordinarily not be considered. Untimely
submissions, other than untimely papers filed by the patent owner after
the period set for response, will not be placed of record in the
reexamination file but will be returned to the sender.

Papers filed in which no proof of service is included and proof of
service is required may be denied consideration. Where no proof of
service is included, inquiry should be made of the sender by the
reexamination clerk as to whether service was in fact made. If no
service was made, the paper is placed in the reexamination file but is
not considered. See MPEP Section  2266.03 and Section  2267.

---SECTION---2253 Consideration by Examiner

Once reexamination is ordered, any submissions properly filed and served
in accordance with  37 CFR 1.530 and  37 CFR 1.535 will be considered by
the primary examiner when preparing the first Office action.

With respect to consideration of any proposed amendments to the
specification, including claims, made by the patent owner, the examiner
will be guided by the provisions of  37 CFR 1.530(d).  With respect to
consideration of the patent owner's statement, the examiner will be
guided by  37 CFR 1.530(c).

As to consideration of a reply by a third party requester, the examiner
will be guided by  37 CFR 1.535.  If the requester's reply to the patent
owner's statement raises issues not previously presented, such issues
will be treated by the examiner in the Office action if they are within
the scope of reexamination.  However, if an issue presented by the reply
is not within the scope of reexamination, it should be treated pursuant
to  37 CFR 1.552(c).

For handling of new matter, see MPEP Section  2270.

---SECTION---2254 Conduct of Reexamination Proceedings

35 U.S.C. 305 Conduct of reexamination proceedings.

After the times for filing the statement and reply provided for by
section 304 of this title have expired, reexamination will be conducted
according to the procedures established for initial examination under
the provisions of sections 132 and 133 of this title. In any
reexamination proceeding under this chapter, the patent owner will be
permitted to propose any amendment to his patent and a new claim or
claims thereto, in order to distinguish the invention as claimed from
the prior art cited under the provisions of section 301 of this title,
or in response to a decision adverse to the patentability of a claim of
a patent. No proposed amended or new claim enlarging the scope of a
claim of the patent will be permitted in a reexamination proceeding
under this chapter. All reexamination proceedings under this section,
including any appeal to the Board of Patent Appeals and Interferences,
will be conducted with special dispatch within the Office.

37 CFR 1.550 Conduct of reexamination proceedings.

(a) All reexamination proceedings, including any appeals to the Board of
Patent Appeals and Interferences, will be conducted with special
dispatch within the Office.  After issuance of the reexamination order
and expiration of the time for submitting any responses thereto, the
examination will be conducted in accordance with Section Section  1.104,
1.110 through 1.113 and 1.116, and will result in the issuance of a
reexamination certificate under Section  1.570.

(b) The patent owner will be given at least thirty days to respond to
any Office action.  Such response may include further statements in
response to any rejections or proposed amendments or new claims to place
the patent in a condition where all claims, if amended as proposed,
would be patentable.

(c) The time for taking any action by a patent owner in a reexamination
proceeding will be extended only for sufficient cause, and for a
reasonable time specified. Any request for such extension must be filed
on or before the day on which action by the patent owner is due, but in
no case will the mere filing of the request effect any extension. See
Section  1.304(a) for extensions of time for filing a notice of appeal
to the U.S. Court of Appeals for the Federal Circuit or for commencing a
civil action.

(d) If the patent owner fails to file a timely and appropriate response
to any Office action, the reexamination proceeding will be terminated
and the Commissioner will proceed to issue a certificate under Section 
1.570 in accordance with the last action of the Office.

(e) The reexamination requester will be sent copies of Office actions
issued during the reexamination proceeding.  After filing of a request
for reexamination by a third party requester, any document filed by
either the patent owner or the third party requester must be served on
the other party in the reexamination proceeding in the manner provided
by Section  1.248.  The document must reflect service or the document
may be refused consideration by the Office.

(1) The active participation of the reexamination requester ends with
the reply pursuant to Section  1.535, and no further submissions on
behalf of the reexamination requester will be acknowledged or
considered.  Further, no submissions on behalf of any third parties will
be acknowledged or considered unless such submissions are:

(i) In accordance with Section  1.510; or

(ii) Entered in the patent file prior to the date of the order to
reexamine pursuant to Section  1.525.

(2) Submissions by third parties, filed after the date of the order to
reexamine pursuant to Section  1.525, must meet the requirements of and
will be treated in accordance with Section  1.501(a).

Once reexamination is ordered and the times for submitting any responses
to the order have expired, no further active participation by the third
party reexamination requester is allowed, and no third party submissions
will be acknowledged or considered unless they are in accordance with 
37 CFR 1.510. The reexamination proceedings will be ex parte because
this was the intention of the legislation. Ex parte proceedings preclude
the introduction of multiple arguments and issues by the third party
requester which are not within the intent of  35 U.S.C. 305
("reexamination will be conducted according to the procedures
established for initial examination under the provisions of sections 132
and 133 of this title"), and ex parte proceedings reduce possible
harassment of the patent owner.

The patent owner cannot file papers on behalf of the requester and
thereby circumvent the intent of the legislation and the rules. The
Court of Appeals for the Federal Circuit held in Emerson Elec. Co. v.
Davoil, Inc., 88 F.3d 1051, 39 USPQ2d  1474 (Fed. Cir. 1996) that a
federal district court does not have the authority to order a patent
owner to file papers prepared by a third party in addition to the patent
owner's own submission in a patent reexamination proceeding. Such papers
prepared by the third party and filed by the patent owner will not be
entered, and the entire submission will be returned to the patent owner
as an inappropriate response. See MPEP Section  2266 and Section  2267. 

The examination will be conducted in accordance with  37 CFR 1.104,
1.110-1.113, and 1.116 (35 U.S.C. 132 and 133) and will result in the
issuance of a reexamination certificate under  37 CFR 1.570. The
proceeding shall be conducted with special dispatch within the Office
pursuant to  35 U.S.C. 305, last sentence.  A full search will not
routinely be made by the examiner. The third party reexamination
requester will be sent copies of Office actions and the patent owner
must serve responses on the requester. Citations submitted in the patent
file prior to issuance of an order for reexamination will be considered
by the examiner during the reexamination. Reexamination will proceed
even if the copy of the order sent to the patent owner is returned
undelivered. The notice under  37 CFR 1.11(c) is constructive notice to
the patent owner and lack of response from the patent owner will not
delay reexamination.  See MPEP Section  2230.

---SECTION---2255 Who Reexamines

The examination will ordinarily be conducted by the same patent examiner
in the examining groups who made the decision on whether the
reexamination request should be granted.  See MPEP Section  2236.

However, if a petition under  37 CFR 1.515(c) is granted, the
reexamination will normally be conducted by another examiner. See MPEP
Section  2248.

---SECTION---2256 Prior Art Patents and Printed Publications Considered
by Examiner in Reexamination

The primary source of prior art will be the patents and printed
publications cited in the request.

The examiner must also consider patents and printed publications:

(A) cited by a reexamination requester under  37 CFR 1.510;

(B) cited in 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 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 patent file from  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.

---SECTION---2257 Listing of Prior Art

The examiner must list on a form PTO-892, if not already listed on a
form PTO-1449 or on a form PTO/SB/42 (37 CFR 1.501 IDS in a Patent), all
prior art patents or printed publications which have been properly:

(A) cited by the reexamination requester in the request under  37 CFR
1.510,

(B) cited by the patent owner in the statement under  37 CFR 1.530 if
the citation complies with  37 CFR 1.98,

(C) cited by the reexamination requester in the reply under  37 CFR
1.535 if the citation complies with  37 CFR 1.98, and

(D) cited by the patent owner under the duty of disclosure requirements
of  37 CFR 1.555 if the citation complies with  37 CFR 1.98.

The examiner must also list on a form PTO-892, if not already listed on
a form PTO-1449 or on form PTO/SB/42, all prior art patents or printed
publications which have been cited in the decision on the request, or
applied in making rejections or cited as being pertinent during the
reexamination proceedings. Such prior art patents or printed
publications may have come to the examiners' attention because:

(A) they were of record in the patent file due to a prior art submission
under  37 CFR 1.501 which was received prior to the date of the order,

(B) they were of record in the patent file as result of earlier
examination proceedings, or

(C) they were discovered by the examiner during a prior art search.

In instances where the examiner considers but does not wish to cite
documents of record in the patent file, notations should be made in the
reexamination file in the manner set forth in MPEP Section  719.05, item
B.

All citations listed on form PTO-892 and all citations not lined out on
any form PTO-1449 and on any form PTO/SB/42 will be printed on the
reexamination certificate under "References cited."

---SECTION---2258 Scope of Reexamination

37 CFR 1.552 Scope of reexamination in reexamination proceedings.

(a) Patent claims will be reexamined on the basis of patents or printed
publications.

(b) Amended or new claims presented during a reexamination proceeding
must not enlarge the scope of the claims of the patent and will be
examined on the basis of patents or printed publications and also for
compliance with the requirements of  35 U.S.C. 112 and the new matter
prohibition of  35 U.S.C. 132.

(c) Questions other than those indicated in paragraphs (a) and (b) of
this section will not be resolved in a reexamination proceeding. If such
questions are discovered during a reexamination proceeding, the
existence of such questions will be noted by the examiner in an Office
action, in which case the patent owner may desire to consider the
advisability of filing a reissue application to have such questions
considered and resolved.

The reexamination proceeding provides a complete reexamination of the
patent claims on the basis of prior art patents and printed
publications.  Issues relating to  35 U.S.C. 112 are addressed only with
respect to new claims or amendatory subject matter in the specification,
claims or drawings.  Any new or amended claims are examined to ensure
that the scope of the original patent claims is not enlarged, i.e.,
broadened.  See  35 U.S.C. 305(a).

I. PRIOR ART PATENTS OR PRINTED PUBLICATIONS

Rejections on prior art in reexamination proceedings may only be made on
the basis of prior art patents or printed publications. Prior art
rejections may be based upon the following portions of  35 U.S.C. 102:

"(a) . . . patented or described in a printed publication in this or a
foreign country, before the invention thereof by the applicant for
patent, or"

   "(b)   the invention was patented or described in a printed
publication in this or a foreign country . . . more than one year prior
to the date of the application for patent in the United States, or"                    
+++        "(d)  the invention was first patented or caused to be
patented, or was the subject of an inventor's certificate, by the
applicant or his legal representatives or assigns in a foreign country
prior to the date of the application for patent in this country on an
application for patent or inventor's certificate filed more than twelve
months before the filing of the application in the United States, or"

   "(e)   the invention was described in a patent granted on an
application for patent by another filed in the United States before the
invention there of by the applicant for patent, or on an international
application by another who has fulfilled the requirements of paragraphs
(1), (2), and (4) of section 371(c) of this title before the invention
thereof by the applicant for patent".                     +++    

Similarly, substantial new grounds of patentability may also be made
under  35 U.S.C. 103 which are based on the above indicated portions of 
35 U.S.C. 102.

Public Law 98-622 enacted on November 8, 1984, changed a complex body of
case law and amended title 35 of the United States Code by adding a new
sentence which provides that subject matter developed by another which
qualifies as prior art only under  35 U.S.C. 102 (f) or (g) shall not
preclude patentability under  35 U.S.C. 103 provided the subject matter
and the claimed invention were commonly owned at the time the invention
was made. This change overrules the practice under In re Bass, 474 F.2d
1276, 177 USPQ 178, (CCPA 1973) wherein an earlier invention by a
co-employee was treated as prior art under  35 U.S.C. 102(g) and
possibly  35 U.S.C. 102(f) with respect to a later invention made by
another employee of the same organization. However, the Federal Circuit
held in   E. I. du Pont de Nemours Co. v. Phillips Petroleum Co., 849
F.2d 1430, 7 USPQ2d 1129 (Fed. Cir. 1988), that the prior work of
another under  35 U.S.C. 102(g), except as qualified by  35 U.S.C. 103
with respect to certain commonly owned subject matter, can be used as 
35 U.S.C. 103 prior art so long as it has not been abandoned,
suppressed, or concealed. Accordingly, a substantial new question of
patentability may be found under  35 U.S.C. 102(f) or (g)/103 based on
the prior invention of another disclosed in a patent or printed
publication, if there was no common ownership at the time the claimed
invention was made.  See Chapter 2100.

A. Previously Considered Prior Art Patents Or Printed Publications

After reexamination is ordered based on a proper substantial new
question of patentability, a ground of rejection based wholly on prior
art previously considered by the Office (in an earlier examination of
the patent) may not be raised by the examiner. In re Recreative
Technologies, 83 F.3d 1394, 38 USPQ2d 1776 (Fed. Cir. 1996).  In
deciding whether to make a rejection of the claims, the consideration to
be given to prior art patents or printed publications cited in an
earlier examination is controlled by In re Portola Packaging Inc., 110
F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997).

B. Matters Other Than Patents or Printed Publications

Rejections will not be based on matters other than patents or printed
publications, such as public use or sale, inventorship,  35 U.S.C. 101,
fraud, etc. In this regard, see In re Lanham, 1 USPQ2d 1877 (Comm'r Pat.
1986), and Stewart Systems v.   Comr. of Patents and Trademarks, 1
USPQ2d 1879 (E.D. Va. 1986). A rejection on prior public use or sale,
insufficiency of disclosure, etc., cannot be made even if it relies on a
prior patent or printed publication. Prior patents or printed
publications must be applied under an appropriate portion of  35 U.S.C.
102 and/or 103 when making a rejection.

C. Intervening Patents or Printed Publications

Rejections may be made in reexamination proceedings based on intervening
patents or printed publications where the patent claims under
reexamination are entitled only to the filing date of the patent and are
not supported by an earlier foreign or United States patent application
whose filing date is claimed. For example, under  35 U.S.C. 120, the
effective date of these claims would be the filing date of the
application which resulted in the patent. Intervening patents or printed
publications are available as prior art under In re Ruscetta, 255 F.2d
687, 118 USPQ 101 (CCPA 1958), and In re van Langehoven, 458 F.2d 132,
173 USPQ 426 (CCPA 1972).  See also MPEP Section  201.11.

D. Double Patenting

Double patenting is normally proper for consideration in reexamination. 
See In re Lonardo, 119 F.3d 960, 43 USPQ2d 1262 (Fed. Cir. 1997). In
Lonardo, the Federal Circuit reviewed and interpreted the language of 
35 U.S.C. 303 and stated that:

Since the statute in other places refersto prior art in relation to reexamination, see id., it seems apparent
that Congress intended that the phrases "patents and publications" and
"other patents or printed publications" in section 303(a) not be limited
to prior art patents or printed publications --  .  Finally, it is
reasonable to conclude that Congress intended to include double
patenting over a prior patent as a basis for reexamination because
maintenance of a patent that creates double patenting is as much of an
imposition on the public as maintenance of patent that is unpatentable
over prior art.  Thus, we conclude that the PTO was authorized during
reexamination to consider the question of double patenting based upon
the `762 patent. In re Lonardo, 119 F.3d at 966, 43 USPQ2d at 1266. 
Accordingly, the issue of double patenting is appropriate for
consideration in reexamination, both as a basis for ordering
reexamination and during subsequent examination on the merits.  The
issue of double patenting is to be considered by the examiner when
making the decision on the request for reexamination.  The examiner
should determine whether the issue of double patenting raises a
substantial new question of patentability.  The issue of double
patenting is also to be considered during the examination stage of
reexamination proceeding.  In the examination stage, the examiner should
determine whether a rejection based on double patenting is appropriate. 

See also Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985)
("Double patenting rejections are analogous to rejections under  35
U.S.C. 103 and depend on the presence of a prior patent as the basis for
the rejection").

As is the case for an application, a judicially created double patenting
rejection (made in a reexamination) can be overcome by the filing of a
terminal disclaimer in accordance with  37 CFR 1.321(c).  Where a
terminal disclaimer is submitted in a reexamination proceeding, form
paragraph 14.23.01 should be used if the terminal disclaimer is proper.
If the terminal disclaimer is not proper, form paragraph 14.25 should be
used, and one or more of the appropriate form paragraphs 14.26 to 14.32
must follow form paragraph 14.25 to indicate why the terminal disclaimer
is not accepted. See also MPEP Section  1490.

E. Affidavits or Declarations

Affidavits or declarations which explain the contents or pertinent dates
of prior patents or printed publications in more detail may be
considered in reexamination, but any rejection must be based upon the
prior patents or printed publications as explained by the affidavits or
declarations. The rejection in such circumstances cannot be based on the
affidavits or declarations as such, but must be based on the prior
patents or printed publications.

F. Admissions; Use of Admissions

1. Initial Reexamination Determination and Order

The consideration under  35 U.S.C. 303 of a request for reexamination is
limited to prior art patents and printed publications. See Ex parte
McGaughey, 6 USPQ2d 1334, 1337 (Bd. Pat. App. & Inter. 1988).  Thus an
admission, per se, may not be the basis for establishing a substantial
new question of patentability. However, an admission by the patent owner
of record in the file or in a court record may be utilized in
combination with a patent or printed publication.

2. Reexamination Ordered, Examination on the Merits

After reexamination has been ordered, the examination on the merits is
dictated by  35 U.S.C. 305, see Ex parte McGaughey, 6 USPQ2d 1334, 1337
(Bd. Pat. App. & Inter. 1988).

Admissions by the patent owner in the record as to matters affecting
patentability may be utilized in a reexamination proceeding; see  37 CFR
1.104(c)(3).

37 CFR 1.104(c)(3) provides that admissions by the patent owners as to
matters affecting patentability may be utilized in a reexamination
proceeding. The Supreme Court when discussing  35 U.S.C. 103 in Graham
v. John Deere Co. , 383 U.S. 6, 148 USPQ 459 (1966) stated, inter alia,
"the scope and content of the prior art are to be determined."
Accordingly, a proper evaluation of the scope and content of the prior
art in determining obviousness would require a utilization of any
"admission" by the patent owner which can be used to interpret or modify
a patent or printed publication applied in a reexamination proceeding. 
This is true whether such admission results from a patent or printed
publication or from some other source. An admission as to what is in the
prior art is simply that, an admission, and requires no independent
proof.  It is an acknowledged, declared, conceded, or recognized fact or
truth, Ex parte McGaughey, 6 USPQ2d 1334, 1337 (Bd. Pat. App. & Inter.
1988).  While the scope and content of the admission may sometimes have
to be determined, this can be done from the record and from the paper
file in the same manner as with patents and printed publications. To
ignore an admission by the patent owner, from any source, and not use
the admission as part of the prior art in conjunction with patents and
printed publications in reexamination would make it impossible for the
examiner to properly determine the scope and content of the prior art as
required by Graham, supra.

The Board of Appeals upheld the use of an admission in a reexamination
proceeding in Ex parte Seiko Koko Kabushiki Kaisha, 225 USPQ 1260 (Bd.
Pat. App. & Inter. 1984), Ex parte Kimbell, 226 USPQ 688 (Bd. Pat. App.
& Inter. 1985) and in Ex parte McGaughey, 6 USPQ2d 1334 (Bd. Pat. App. &
Inter. 1988).  In Seiko, the Board relied on In re Nomiya, 509 F.2d 566,
184 USPQ 607 (CCPA 1975) holding an admission of prior art in the
specification of the parent undergoing reexamination is considered prior
art which may be considered as evidence of obviousness under  35 U.S.C.
103. In Kimbell, the Board referred to the patent specification and
noted the admission by appellant that an explosion-proof housing was
well known at the time of the invention. In Ex parte McGaughey, 6 USPQ2d
1334, 1337 (Bd. Pat. App. & Int. 1988), the Board held that any
equivocal admission relating to prior art is a fact which is part of the
scope and content of the prior art and that prior art admissions
established in the record are to be considered in reexamination. An
admission from any source can be used with respect to interpreting or
modifying a prior art patent or printed publication, in a reexamination
proceeding. The Board expressly overruled the prior Board decision in Ex
parte Horton, 226 USPQ 697 (Bd. Pat. App. & Inter. 1985) which held that
admissions which are used as a basis for a rejection in reexamination
must relate to patents and printed publications.

The admission can reside in the patent file (made of record during the
prosecution of the patent application) or may be presented during the
pendency of the reexamination proceeding or in litigation.  Admissions
by the patent owner as to any matter affecting patentability may be
utilized to determine the scope and content of the prior art in
conjunction with patents and printed publications in a prior art
rejection, whether such admissions result from patents or printed
publications or from some other source.  An admission relating to any
prior art (i.e., on sale, public use, etc.) established in the record or
in court may be used by the examiner in combination with patents or
printed publications in a reexamination proceeding. The admission must
stand on its own. Information supplementing or further defining the
admission would be improper. Any admission submitted by the patent owner
is proper. A third party, however, may not submit admissions of the
patent owner made outside the record or the court.  Such a submission
would be outside the scope of reexamination.

G. Claim Interpretation and Treatment

Original patent claims will be examined only on the basis of prior art
patents or printed publications applied under the appropriate parts of 
35 U.S.C. 102 and 103.  See MPEP Section  2217. During reexamination,
claims are given the broadest reasonable interpretation consistent with
the specification and limitations in the specification are not read into
the claims (In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir.
1984)). In a reexamination proceeding involving claims of an expired
patent, which are not subject to amendment, a policy of liberal (i.e.,
narrow) construction should be applied. Such a policy favors a
construction of a patent claim that will render it valid; i.e., a narrow
construction, over a broad construction that would render it invalid.
See In re Papst-Motoren, 1 USPQ2d 1659 (Bd. Pat. App. & Inter. 1986). 
The statutory presumption of validity,  35 U.S.C. 282, has no
application in reexamination (In re Etter, 756 F.2d 852, 225 USPQ 1
(Fed. Cir. 1985)).

II. COMPLIANCE WITH 35 U.S.C. 112

Where new claims are presented or where any part of the disclosure is
amended, the claims of the reexamination proceeding, are to be examined
for compliance with  35 U.S.C. 112.  Consideration of  35 U.S.C. 112
issues should, however, be limited to the amendatory (i.e., new
language) matter. For example, a claim which is amended or a new claim
which is presented containing a limitation not found in the original
patent claim should be considered for compliance under  35 U.S.C. 112
only with respect to that limitation. To go further would be
inconsistent with the statute to the extent that  35 U.S.C. 112 issues
would be raised as to matter in the original patent claim. Thus, a term
in a patent claim which the examiner might deem to be too broad cannot
be considered as too broad in a new or amended claim unless the
amendatory matter in the new or amended claim creates the issue.

A. 35 U.S.C. 112 Issues To Be Considered

Compliance of new or amended claims with the enablement and/or
description requirements of the first paragraph of  35 U.S.C. 112 should
be considered as to the amendatory and new text in the reexamination
proceeding. Likewise, the examiner should determine whether the new or
amended claims comply with the second paragraph of  35 U.S.C. 112.  MPEP
Section  2163 - Section  2173.05(v) provide extensive guidance as to
these matters.

B. New Matter

35 U.S.C. 305 provides for examination under  35 U.S.C. 132, which
prohibits the introduction of new matter into the disclosure. Thus, the
question of new matter should be considered in a reexamination
proceeding. See MPEP Section  2163.06 as to the relationship of the
written description requirement of the first paragraph of  35 U.S.C. 112
and the new matter prohibition under  35 U.S.C. 132. Where the new
matter is added to the claims or affects claim limitations, the claims
should be rejected under  35 U.S.C. 112, first paragraph, for failing to
meet the written description requirement.

C. Amendment of the Specification

Where the specification is amended in a reexamination proceeding, the
examiner should make certain that the requirements of  35 U.S.C. 112 are
met. An amendment to the specification can redefine the scope of the
terms in a claim such that the claim is no longer clear or is not
supported by the specification. Thus, an amendment to the specification
can result in the failure of the claims to comply with  35 U.S.C. 112,
even where the claims are not amended in any respect.

III. CLAIMS IN PROCEEDING MUST NOT ENLARGE SCOPE OF THE CLAIMS OF THE
PATENT

Where new or amended claims are presented or where any part of the
disclosure is amended, the claims of the reexamination proceeding should
be examined under  35 U.S.C. 305, to determine whether they enlarge the
scope of the original claims.  35 U.S.C. 305(a) states that "no proposed
amended or new claim enlarging the scope of the claims of the patent
will be permitted in a reexamination proceeding...".

A. Criteria for Enlargement of the Scope of the Claims

A broadened claim:  A claim is broader than another claim if it is
broader (greater in scope) "  in any respect," even though it may be
narrower in other respects. In re Freeman, 30 F.3d 1459, 1464, 32 USPQ2d
1444, 1447 (Fed. Cir. 1994).

A claim presented in a reexamination proceeding "enlarges the scope" of
the claims of the patent being reexamined where the claim is broader
than each and every claim of the patent.

If any amended or newly added claim contains within its scope any
conceivable apparatus or process which would not have infringed any of
the original patent claims, then that reexamination claim would be
broader than the original patent claims. Id. (quoting Tillotson, Ltd. v.
Walbro Corp., 831 F.2d 1033, 1037 n.2, 4 USPQ2d 1450, 1453 n.2 (Fed.
Cir. 1987)).

The addition of process claims as a new category of invention to be
claimed in the patent (i.e., where there were no process claims present
in the original patent) is considered as being a broadening of the
invention. See Ex Parte Wikdahl, 10 USPQ2d 1546 (Bd. Pat. App. & Inter.
1989).

B. Amendment of the Specification

Where the specification is amended in a reexamination proceeding, the
examiner should make certain that the amendment does not enlarge the
scope of the claims of the patent. An amendment to the specification can
enlarge the scope of the claims by redefining the scope of the terms in
a claim, even where the claims are not amended in any respect.

C. Rejection of Claims Where There Is Enlargement

Any claim which enlarges the scope of the claims of the patent should be
rejected under  35 U.S.C. 305(a). Form paragraph 22.11 is to be employed
in making the rejection.

22.11 Rejection, 35 U.S.C. 305, Claim Enlarges Scope of Patent

Claim  [1] rejected under  35 U.S.C. 305(a) as enlarging the scope of
the claim(s) of the patent being reexamined.  In  35 U.S.C. 305(a), it
is stated that "[n]o proposed amended or new claim enlarging the scope
of a claim of the patent will be permitted in a reexamination
proceeding... ."  A claim presented in a reexamination "enlarges the
scope" of the patent claim(s) where the claim is broader than any claim
of the patent.  A claim is broader in scope than the original claims if
it contains within its scope any conceivable apparatus or process which
would not have infringed the original patent.  A claim is broadened if
it is broader in any one respect, even though it may be narrower in
other respects. 

[2]

Examiner Note:

The claim limitations which are considered to broaden the scope should
be identified and explained in bracket 2.  See MPEP Section   2258.

IV. OTHER MATTERS

Where some of the patent claims in a patent being reexamined have been
the subject of a prior Office or court decision, see MPEP Section  2242.
Where other proceedings involving the patent are copending with the
reexamination proceeding, see MPEP Section  2282 -  Section  2286.

Although a request for reexamination may not specify all claims as
presenting a substantial new question, each claim of the patent will be
reexamined. The resulting reexamination certificate will indicate the
status of all of the patent claims and any added patentable claims.

Restriction requirements cannot be made in a reexamination proceeding
since no statutory basis exists for restriction in a reexamination
proceeding.

There are matters ancillary to reexamination which are necessary and
incident to patentability which will be considered. Amendments may be
made to the specification to correct, for example, an inadvertent
failure to claim foreign priority or the continuing status of the patent
relative to a parent application if such correction is necessary to
overcome a reference applied against a claim of the patent. No renewal
of previously made claims for foreign priority under  35 U.S.C. 119 or
continuing status of the application under  35 U.S.C. 120, is necessary
during reexamination. Correction of inventorship may also be made during
reexamination.  See  37 CFR 1.324 and MPEP Section  1481 for petition
for correction of inventorship in a patent.  If a petition filed under 
37 CFR 1.324 is granted, a Certificate of Correction indicating the
change of inventorship will not be issued, because the reexamination
certificate that will ultimately issue will contain the appropriate
change-of-inventorship information (i.e., the Certificate of Correction
is in effect merged with the reexamination certificate).

Affidavits under  37 CFR 1.131 and 1.132 may be utilized in a
reexamination proceeding. Note, however, that an affidavit under  37 CFR
1.131 may not be used to "swear back" of a reference patent if the
reference patent is claiming the same invention as the patent undergoing
reexamination.  In such a situation, the patent owner may, if
appropriate, seek to raise this issue in an interference proceeding via
an appropriate reissue application if such a reissue application may be
filed.

Patent claims not subject to reexamination because of their prior
adjudication by a court should be identified.  See MPEP Section  2242.

For handling a dependent claim in reexamination proceedings, see MPEP
Section  2260.01. All added claims will be examined.

Where grounds set forth in a prior Office or Federal Court decision,
which are not based on patents or printed publications clearly raise
questions as to the claims, the examiner's Office action should clearly
state that the claims have not been examined as to those grounds not
based on patents or printed publications stated in the prior decision. 
See  37 CFR 1.552(c).  See In re Knight, 217 USPQ 294 (Comm'r Pat.
1982).  All claims under reexamination should, however, be reexamined on
the basis of prior patents and printed publications.

If questions other than those indicated above (for example, questions of
patentability based on the public use or sale, fraud, abandonment under 
35 U.S.C. 102(c), etc.) are discovered during a reexamination
proceeding, the existence of such questions will be noted by the
examiner in an Office action, in which case the patent owner may desire
to consider the advisability of filing a reissue application to have
such questions considered and resolved. Such questions could arise in a
reexamination requester's  37 CFR 1.510 request or in a  37 CFR 1.535
reply by the requester. Note form paragraph 22.03.

22.03 Issue Not Within Scope of Reexamination

It is noted that an issue not within the scope of reexamination
proceedings has been raised.  [1].  The issue will not be considered in
a reexamination proceeding. 37 CFR 1.552(c).  While this issue is not
within the scope of reexamination, the patentee is advised that it may
be desirable to consider filing a reissue application provided that the
patentee believes one or more claims to be partially or wholly
inoperative or invalid based upon the issue.

Examiner Note:

1. In bracket 1, identify the issues.

2. This paragraph may be used either when the request for reexamination
is based upon issues such as public use or sale, fraud, or abandonment
or the invention, or when questions are discovered during a
reexamination proceeding.

Where a request for reexamination is filed on a patent after it has been
reissued, reexamination will be denied because the patent on which the
request for reexamination is based has been surrendered. Should
reexamination of the reissued patent be desired, a new request for
reexamination including, and based on, the specification and claims of
the reissue patent must be filed. Where the reissue patent issues after
the filing of a request for reexamination, see MPEP Section  2285.

---SECTION---2259 Collateral Estoppel In Reexamination Proceedings

MPEP Section  2242 and Section  2286 relate to the Office policy
controlling the determination on a request for reexamination and the
subsequent examination phase of the reexamination where there has been a
Federal Court decision on the merits as to the patent for which
reexamination is requested. Since claims finally held invalid by a
Federal Court will be withdrawn from consideration and not reexamined
during a reexamination proceeding, a rejection on the grounds of
collateral estoppel will not be appropriate in reexamination.

---SECTION---2260 Office Actions

37 CFR 1.104 Nature of examination.

(a)  	Examiner's action.

(1) On taking up an application for examination or a patent in a
reexamination proceeding, the examiner shall make a thorough study
thereof and shall make a thorough investigation of the available prior
art relating to the subject matter of the claimed invention.  The
examination shall be complete with respect both to compliance of the
application or patent under reexamination with the applicable statutes
and rules and to the patentability of the invention as claimed, as well
as with respect to matters of form, unless otherwise indicated.

(2) The applicant, or in the case of a reexamination proceeding, both
the patent owner and the requester, will be notified of the examiner's
action.  The reasons for any adverse action or any objection or
requirement will be stated and such information or references will be
given as may be useful in aiding the applicant, or in the case of a
reexamination proceeding the patent owner, to judge the propriety of
continuing the prosecution.

(3) An international-type search will be made in all national
applications filed on and after June 1, 1978.

(4) Any national application may also have an international-type search
report prepared thereon at the time of the national examination on the
merits, upon specific written request therefor and payment of the
international-type search report fee set forth in Section  1.21(e). The
Patent and Trademark Office does not require that a formal report of an
international-type search be prepared in order to obtain a search fee
refund in a later filed international application.

(5) Copending applications will be considered by the examiner to be
owned by, or subject to an obligation of assignment to, the same person
if:

(i) The application files refer to assignments recorded in the Patent
and Trademark Office in accordance with Part 3 of this chapter which
convey the entire rights in the applications to the same person or
organization; or

(ii) Copies of unrecorded assignments which convey the entire rights in
the applications to the same person or organization are filed in each of
the applications; or

(iii) An affidavit or declaration by the common owner is filed which
states that there is common ownership and states facts which explain why
the affiant or declarant believes there is common ownership, which
affidavit or declaration may be signed by an official of the corporation
or organization empowered to act on behalf of the corporation or
organization when the common owner is a corporation or other
organization; or

(iv) Other evidence is submitted which establishes common ownership of
the applications.

(b) Completeness of examiner's action.  The examiner's action will be
complete as to all matters, except that in appropriate circumstances,
such as misjoinder of invention, fundamental defects in the application,
and the like, the action of the examiner may be limited to such matters
before further action is made.  However, matters of form need not be
raised by the examiner until a claim is found allowable.

(c) Rejection of claims.

(1) If the invention is not considered patentable, or not considered
patentable as claimed, the claims, or those considered unpatentable will
be rejected.

(2) In rejecting claims for want of novelty or for obviousness, the
examiner must cite the best references at his or her command. When a
reference is complex or shows or describes inventions other than that
claimed by the applicant, the particular part relied on must be
designated as nearly as practicable.  The pertinence of each reference,
if not apparent, must be clearly explained and each rejected claim
specified.

(3) In rejecting claims the examiner may rely upon admissions by the
applicant, or the patent owner in a reexamination proceeding, as to any
matter affecting patentability and, insofar as rejections in
applications are concerned, may also rely upon facts within his or her
knowledge pursuant to paragraph (d)(2) of this section.

(4) Subject matter which is developed by another person which qualifies
as prior art only under  35 U.S.C. 102(f) or (g) may be used as prior
art under  35 U.S.C. 103 against a claimed invention unless the entire
rights to the subject matter and the claimed invention were commonly
owned by the same person or organization or subject to an obligation of
assignment to the same person or organization at the time the claimed
invention was made.

(5) The claims in any original application naming an inventor will be
rejected as being precluded by a waiver in a published statutory
invention registration naming that inventor if the same subject matter
is claimed in the application and the statutory invention registration.
The claims in any reissue application naming an inventor will be
rejected as being precluded by a waiver in a published statutory
invention registration naming that inventor if the reissue application
seeks to claim subject matter:

(i) Which was not covered by claims issued in the patent prior to the
date of publication of the statutory invention registration; and

(ii) Which was the same subject matter waived in the statutory invention
registration.

(d)  	Citation of references. 

(1) If domestic patents are cited by the examiner, their numbers and
dates, and the names of the patentees must be stated. If foreign
published applications or patents are cited, their nationality or
country, numbers and dates, and the names of the patentees must be
stated, and such other data must be furnished as may be necessary to
enable the applicant, or in the case of a reexamination proceeding, the
patent owner, to identify the published applications or patents cited.
In citing foreign published applications or patents, in case only a part
of the document is involved, the particular pages and sheets containing
the parts relied upon must be identified. If printed publications are
cited, the author (if any), title, date, pages or plates, and place of
publication, or place where a copy can be found, shall be given.

(2) When a rejection in an application is based on facts within the
personal knowledge of an employee of the Office, the data shall be as
specific as possible, and the reference must be supported, when called
for by the applicant, by the affidavit of such employee, and such
affidavit shall be subject to contradiction or explanation by the
affidavits of the applicant and other persons.

(e)  	Reasons for allowance. If the examiner believes that the record of
the prosecution as a whole does not make clear his or her reasons for
allowing a claim or claims, the examiner may set forth such reasoning.
The reasons shall be incorporated into an Office action rejecting other
claims of the application or patent under reexamination or be the
subject of a separate communication to the applicant or patent owner.
The applicant or patent owner may file a statement commenting on the
reasons for allowance within such time as may be specified by the
examiner. Failure to file such a statement does not give rise to any
implication that the applicant or patent owner agrees with or acquiesces
in the reasoning of the examiner.

It is intended that the examiner's first ex parte action on the merits
be the primary action to establish the issues which exist between the
examiner and the patent owner insofar as the patent is concerned.  At
the time the first action is issued, the patent owner has already been
permitted to file a statement and an amendment pursuant to  37 CFR
1.530; and the reexamination requester, if the requester is not the
patent owner, has been permitted to reply thereto pursuant to  37 CFR
1.535. Thus, at this point, the issues should be sufficiently focused to
enable the examiner to make a definitive first ex parte action on the
merits which should clearly establish the issues which exist between the
examiner and the patent owner insofar as the patent is concerned. In
view of the fact that the examiner's first action will clearly establish
the issues, the first action should include a statement cautioning the
patent owner that a complete response should be made to the action since
the next action is expected to be a final rejection. The first action
should further caution the patent owner that the requirements of  37 CFR
1.116(b) will be strictly enforced after final rejection and that any
amendments after final rejection must include "a showing of good and
sufficient reasons why they are necessary and were not earlier
presented" in order to be considered The language of form paragraph
22.04 is appropriate for inclusion in the first Office action:

22.04 Papers To Be Submitted in Response to Action

In order to ensure full consideration of any amendments, affidavits or
declarations, or other documents as evidence of patentability, such
documents must be submitted in response to this Office action. 
Submissions after the next Office action, which is intended to be a
final action, will be governed by the requirements of  37 CFR 1.116,
which will be strictly enforced.

---SECTION---2260.01 Dependent Claims

If a base patent claim has been rejected or canceled, any claim which is
directly or indirectly dependent thereon should be allowed if it is
otherwise allowable.  The dependent claim should not be objected to or
rejected merely because it depends on a rejected or canceled claim. No
requirement should be made for rewriting the dependent claim in
independent form. As the original patent claim numbers are not changed
in a reexamination proceeding, the content of the canceled base claim
would remain in the printed patent and would be available to be read as
a part of the allowed dependent claim.

If a new claim (a claim other than a claim appearing in a patent) has
been canceled in a reexamination proceeding, a claim which depends
thereon should be rejected as incomplete. If a new base claim is
rejected, a claim dependent thereon should be objected to if it is
otherwise allowable and a requirement made for rewriting the dependent
claim in independent form.

---SECTION---2261 Special Status For Action

35 U.S.C. 305 Conduct of reexamination proceedings.

                  +++    

All reexamination proceedings under this section, including any appeal
to the Board of Patent Appeals and Interferences, will be conducted with
special dispatch within the Office.

In view of the requirement for "special dispatch," reexamination
proceedings will be "special" throughout their pendency in the Office. 
The examiner's first action on the merits should be completed within 1
month of the filing date of the requester's reply (37 CFR 1.535), or
within   1 month of the filing date of the patent owner's statement (37
CFR 1.530) if there is no requester other than the patent owner.  If no
submissions are made under either  37 CFR 1.530 or  37 CFR 1.535, the
first action on the merits should be completed within 1 month of any due
date for such submission. Mailing of the first action should occur
within 6 WEEKS after the appropriate filing or due date of any statement
and any reply thereto.

Any cases involved in litigation, whether they are reexamination
proceedings or reissue applications, will have priority over all other
cases. Reexamination proceedings not involved in litigation will have
priority over all other cases except reexaminations or reissues involved
in litigation.

---SECTION---2262 Form and Content of Office Action

The examiner's first Office action will be a statement of the examiner's
position and should be so complete that the second Office action can
properly be made a final action.  See MPEP Section  2271.

All Office actions are to be written or dictated and then typed. The
first Office action must be sufficiently detailed that the pertinency
and manner of applying the cited prior art to the claims is clearly set
forth therein.  If the examiner concludes in any Office action that one
or more of the claims are patentable over the cited patents or printed
publications, the examiner should indicate why the claim(s) is clearly
patentable in a manner similar to that used to indicate reasons for
allowance (MPEP Section  1302.14).  If the record is clear why the
claim(s) is/are clearly patentable, the examiner may refer to the
particular portions of the record which clearly establish the
patentability of the claim(s). The first action should also respond to
the substance of each argument raised by the patent owner and requester
pursuant to  37 CFR 1.510, 1.530, and 1.535.  If arguments are presented
which are inappropriate in reexamination, they should be treated in
accordance with  37 CFR 1.552(c).  It is especially important that the
examiner's action in reexamination be thorough and complete in view of
the finality of a reexamination proceeding and the patent owner's
inability to file a continuation proceeding.

Normally, the title will not need to be changed during reexamination. If
a change of the title is necessary, patent owner should be notified of
the need to provide an amendment changing the title 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 Notice of Intent to Issue Reexamination
Certificate has been or is to be mailed, a change to the title of the
invention by the examiner may only be done by way of an Examiner's
Amendment. Changing the title and merely initiating the change is NOT
permitted in reexamination.

A sample of a first Office action in a reexamination proceeding is set
forth below.

Form PTO-465. Reexamination Communication Transmittal Form[GRAPHIC]

Form PTOL-465. Office Action in Reexamination[GRAPHIC]

[GRAPHIC]

[GRAPHIC]

Form PTO/SB/42. 37 CFR 1.501 Information Disclosure Citation in a
Patent[GRAPHIC]

---SECTION---2263 Time for Response

A shortened statutory period of 2 MONTHS will be set for response to
Office actions, except where the reexamination results from a court
order or litigation is stayed for purposes of reexamination, in which
case the shortened statutory period will be set at 1 month. See MPEP
Section  2286. Note, however, that this 1-month policy does NOT apply to
the 2-month period for the filing of a statement under  37 CFR 1.530,
which 2-month period is set by  35 U.S.C. 304.

Where a reexamination proceeding has been stayed because of a copending
reissue application, and the reissue application is abandoned, all
actions in the reexamination after the stay has been removed will set a
1 month shortened statutory period unless a longer period for response
is clearly warranted by nature of the examiner's action; see MPEP
Section  2285.

---SECTION---2264 Mailing of Office Action

Reexamination forms are structured so that the PALM printer can be used
to print the identifying information for the reexamination file and the
mailing address - usually the address of the patent owner's legal
representative.  Where there is no legal representative, the patent
owner's address is printed.  Only the first patent owner's address is
printed where there are multiple patent owners.  A transmittal form
PTOL-465 is also provided for each patent owner in addition to the one
named on the top of the Office action. 

All actions in a third party requester reexamination will have a copy
mailed to the third party requester.  A transmittal form PTOL-465 must
be used in providing the third party requester with a copy of each
Office action.

A completed transmittal form PTOL-465 will be provided as needed for any
third party requester and additional patent owner (discussed above), and
the appropriate address will be entered on it.  The number of
transmittal forms provides a ready reference for the number of copies of
each Office action to be made, and the transmittal form permits use of
the window envelopes in mailing the copies of the action to parties
other than the patent owner.

When the requester is the patent owner, the notation "No copies needed -
Requester is Owner" will be placed on the reexamination file.  A blank
transmittal form having the control number written on it and being
marked "No copies needed - Requester is Owner" could also be placed
inside the reexamination file to alert Office personnel and anyone else
taking part in the processing of the reexamination that no additional
copies are needed.

---SECTION---2265 Extension of Time

37 CFR 1.550 Conduct of reexamination proceedings.

                  +++    

(c) The time for taking any action by a patent owner in a reexamination
proceeding will be extended only for sufficient cause, and for a
reasonable time specified. Any request for such extension must be filed
on or before the day on which action by the patent owner is due, but in
no case will the mere filing of a request effect any extension. See
Section  1.304(a) for extensions of time for filing a notice of appeal
to the U.S. Court of Appeals for the Federal Circuit or for commencing a
civil action.

                  +++    

The provisions of  37 CFR 1.136 (a) and (b) are NOT applicable to
reexamination proceedings under any circumstances. Public Law 97-247
amended  35 U.S.C. 41 to authorize the Commissioner to charge fees for
extensions of time to take action in an "application."  A reexamination
proceeding does not involve an "application." 37 CFR 1.136 authorizes
extensions of the time period only in an application in which an
applicant must respond or take action. There is neither an
"application," nor an "applicant" involved in a reexamination
proceeding. 

An extension of time in a reexamination proceeding is requested pursuant
to  37 CFR 1.550(c).  Accordingly, a request for an extension must be
filed (1) on or before the day on which action by the patent owner is
due and (2) must set forth sufficient reason for the extension. 
Requests for an extension of time in a reexamination proceeding will be
considered only after the decision to grant or deny reexamination is
mailed. Any request filed before that decision will be denied.

The certificate and the certificate of transmission procedures (37 CFR
1.8) and the "Express Mail" mailing procedure (37 CFR 1.10) may be used
to file a request for extension of time, as well as any other paper in
an existing reexamination proceeding (see MPEP Section  2266).

With the exception of an automatic 1-month extension of time to take
further action which will be granted upon filing a first timely response
to a final Office action (see MPEP Section  2272), all requests for
extensions of time to file a patent owner statement under  37 CFR 1.530
or respond to any subsequent Office action in a reexamination proceeding
must be filed under  37 CFR 1.550(c) and will be decided by the Group
Director of the patent examining group conducting the reexamination
proceeding. These requests for an extension of time will be granted only
for sufficient cause and must be filed on or before the day on which
action by the patent owner is due.  In no case will mere filing of a
request for extension of time automatically effect any extension.
Evaluation of whether sufficient cause has been shown for an extension
must be made in the context of providing the patent owner with a fair
opportunity to present an argument against any attack on the patent, and
the requirement of the statute (35 U.S.C. 305) that the proceedings be
conducted with special dispatch. In no case, except in the after final
practice noted above, will the mere filing of a request effect any
extension.

Any request for an extension of time in a reexamination proceeding must
fully state the reasons therefor.  All requests must be submitted in a
separate paper which will be forwarded to the Group Director for action.
A request for an extension of the time period to file a petition from
the denial of a request for reexamination can only be entertained by
filing a petition under  37 CFR 1.183 with appropriate fee to waive the
time provisions of  37 CFR 1.515(c). Since the reexamination examination
process is intended to be essentially ex parte, the party requesting
reexamination can anticipate that requests for an extension of time to
file a petition under  37 CFR 1.515(c) will be granted only in
extraordinary situations.

The time for filing a third party requester reply under  37 CFR 1.535 to
the patent owner's statement cannot be extended under any circumstances.
No extensions will be permitted to the time for filing a reply under  37
CFR 1.535 by the requester because the 2-month period for filing the
reply is a statutory period.  It should be noted that a statutory period
for response cannot be waived.  See MPEP Section  2251.

Ex parte prosecution will be conducted by initially setting either a
1-month or a 2-month shortened period for response, see MPEP Section 
2263. The patent owner also will be given a 2-month statutory period
after the order for reexamination to file a statement. See  37 CFR
1.530(b).  First requests for extensions of these statutory time periods
will be granted for sufficient cause, and for a reasonable time
specified - usually 1 month.  The reasons stated in the request will be
evaluated by the Group Director, and the requests will be favorably
considered where there is a factual accounting of reasonably diligent
behavior by all those responsible for preparing a response within the
statutory time period. Second or subsequent requests for extensions of
time or requests for more than 1 month will be granted only in
extraordinary situations.  Any request for an extension of time in a
reexamination proceeding to file a notice of appeal, a brief or reply
brief, or a request for reconsideration or rehearing will be considered
under the provisions of  37 CFR 1.550(c).  The time for filing the
notice and reasons of appeal to the U.S. Court of Appeals for the
Federal Circuit or for commencing a civil action will be considered
under the provisions of  37 CFR 1.304.

FINAL ACTION - TIME FOR RESPONSE

The after-final practice in reexamination proceedings did not change
October 1, 1982, and the automatic extension of time policy for response
to a final rejection and associated practice are still in effect in
reexamination proceedings.

The filing of a timely first response to a final rejection having a
shortened statutory period for response is construed as including a
request to extend the shortened statutory period for an additional
month, which will be granted even if previous extensions have been
granted, but in no case may the period for response exceed 6 months from
the date of the final action.  Even if previous extensions have been
granted, the primary examiner is authorized to grant the request for
extension of time which is implicit in the filing of a timely first
response to a final rejection.  It should be noted that the filing of
any timely first response to a final rejection will be construed as
including a request to extend the shortened statutory period for an
additional month, even an informal response and even a response that is
not signed. An object of this practice is to obviate the necessity for
appeal merely to gain time to consider the examiner's position in reply
to an amendment timely filed after final rejection. Accordingly, the
shortened statutory period for response to a final rejection to which a
proposed first response has been received will be extended 1 month. Note
that the Office policy of construing a response after final as
inherently including a request for a 1-month extension of time applies
only to the first response to the final rejection.

Normally, examiners will complete a response to an amendment after final
rejection within 5 days after receipt thereof.  In those rare situations
where the advisory action cannot be mailed in sufficient time for the
patent owner to consider the examiner's position with respect to the
proposed first response before termination of the proceeding, the
granting of additional time to complete the response to the final
rejection or to take other appropriate action would be appropriate. See
Groz & Sohme v. Quigg, 10 USPQ2d 1787 (D.D.C. 1988).  The additional
time should be granted by the examiner, and the time granted should be
set forth in the advisory Office action. The advisory action form (PTOL-
467) states that "THE PERIOD FOR RESPONSE IS EXTENDED TO RUN ___ MONTHS
FROM THE DATE OF THE FINAL REJECTION." The blank before "MONTHS" should
be filled in with an integer (2, 3, 4, 5, or 6); fractional months
should not be indicated.  In no case can the period for reply to the
final rejection be extended to exceed 6 months from the mailing date
thereof. An appropriate response (e.g., a second or subsequent amendment
or a notice of appeal) must be filed within the extended period for
response.  If patent owner elects to file a second or subsequent
amendment, it must place the reexamination in condition for allowance or
the reexamination proceeding stands terminated under  37 CFR 1.550(d)
unless an appropriate notice of appeal was filed before the expiration
of the response period.

EXTENSIONS OF TIME TO SUBMIT AFFIDAVITS AFTER FINAL REJECTION

Frequently, patent owners request an extension of time, stating as a
reason therefor that more time is needed in which to submit an
affidavit.  When such a request is filed after final rejection, the
granting of the request for extension of time is without prejudice to
the right of the examiner to question why the affidavit is now necessary
and why it was not earlier presented. If the patent owner's showing is
insufficient, the examiner may deny entry of the affidavit,
notwithstanding the previous grant of an extension of time to submit it. 
The grant of an extension of time in these circumstances serves merely
to keep the proceeding from becoming terminated while allowing the
patent owner the opportunity to present the affidavit or to take other
appropriate action. Moreover, prosecution of the reexamination to save
it from termination must include such timely, complete and proper action
as required by  37 CFR 1.113. The admission of the affidavit for
purposes other than allowance of the claims, or the refusal to admit the
affidavit, and any proceedings relative, thereto, shall not operate to
save the proceeding from termination.

Implicit in the above practice is the fact that affidavits submitted
after final rejection are subject to the same treatment as amendments
submitted after final rejection, In re Affidavit Filed After Final
Rejection, 152 USPQ 292, 1966 C.D. 53 (Comm'r Pat. 1966).

---SECTION---2266 Responses

37 CFR 1.111 Reply by applicant or patent owner.

(a) After the Office action, if adverse in any respect, the applicant or
patent owner, if he or she persists in his or her application for a
patent or reexamination proceeding, must reply thereto and may request
reconsideration or further examination, with or without amendment.

(b) In order to be entitled to reconsideration or further examination,
the applicant or patent owner must reply to the Office action.  The
reply by the applicant or patent owner must be reduced to a writing
which distinctly and specifically points out the supposed errors in the
examiner's action and must reply to every ground of objection and
rejection in the prior Office action.  The reply must present arguments
pointing out the specific distinctions believed to render the claims,
including any newly presented claims, patentable over any applied
references.  If the reply is with respect to an application, a request
may be made that objections or requirements as to form not necessary to
further consideration of the claims be held in abeyance until allowable
subject matter is indicated.  The applicant's or patent owner's reply
must appear throughout to be a bona fide attempt to advance the
application or the reexamination proceeding to final action.  A general
allegation that the claims define a patentable invention without
specifically pointing out how the language of the claims patentably
distinguishes them from the references does not comply with the
requirements of this section.

(c) In amending in response to a rejection of claims in an application
or patent undergoing reexamination, the applicant or patent owner must
clearly point out the patentable novelty which he or she thinks the
claims present in view of the state of the art disclosed by the
references cited or the objections made.  He or she must also show how
the amendments avoid such references or objections. (See Section Section 
1.135 and 1.136 for time for reply.)

37 CFR 1.550 Conduct of reexamination proceedings.

                  +++    

(b) The patent owner will be given at least thirty days to respond to
any Office action.  Such response may include further statements in
response to any rejections or proposed amendments or new claims to place
the patent in a condition where all claims, if amended as proposed,
would be patentable.

(c) The time for taking any action by a patent owner in a reexamination
proceeding will be extended only for sufficient cause, and for a
reasonable time specified. Any request for such extension must be filed
on or before the day on which action by the patent owner is due, but in
no case will the mere filing of a request effect any extension. See
Section  1.304(a) for extensions of time for filing a notice of appeal
to the U.S. Court of Appeals for the Federal Circuit or for commencing a
civil action.

(d) If the patent owner fails to file a timely and appropriate response
to any Office action, the reexamination proceeding will be terminated
and the Commissioner will proceed to issue a certificate under Section 
1.570 in accordance with the last action of the Office.

(e) The reexamination requester will be sent copies of Office actions
issued during the reexamination proceeding.  After filing of a request
for reexamination by a third party requester, any document filed by
either the patent owner or the third party requester must be served on
the other party in the reexamination proceeding in the manner provided
by Section  1.248.  The document must reflect service or the document
may be refused consideration by the Office.

(1) The active participation of the reexamination requester ends with
the reply pursuant to Section  1.535, and no further submissions on
behalf of the reexamination requester will be acknowledged or
considered.  Further, no submissions on behalf of any third parties will
be acknowledged or considered unless such submissions are:

(i) In accordance with Section  1.510; or

(ii) Entered in the patent file prior to the date of the order to
reexamine pursuant to Section  1.525.

(2) Submissions by third parties, filed after the date of the order to
reexamine pursuant to Section  1.525, must meet the requirements of and
will be treated in accordance with Section  1.501(a).

The patent owner cannot file papers on behalf of a third party.  37 CFR
1.550(e). If a third party paper accompanies or is submitted as part of
a timely filed response, the response and third party paper are
considered to be an improper submission under  37 CFR 1.550(e), and the
entire submission shall be returned to the patent owner since the Office
will not determine which portion of the submission is the third party
paper. The third party paper will not be considered. The decision
returning the improper response and the third party paper should provide
an appropriate extension of time under  37 CFR 1.550(c) to refile the
patent owner response without the third party paper.  See MPEP Section 
2254 and Section  2267.

The certificate of mailing and certificate of transmission procedures
(37 CFR 1.8), and the "Express Mail" mailing procedure (37 CFR 1.10),
may be used to file any response in an existing reexamination
proceeding.

The patent owner is required to serve a copy of any response made in the
reexamination proceeding on the third party requester.  37 CFR 1.550(e).
See MPEP Section  2266.03 as to service of patent owner responses to an
Office action.

The patent owner will normally be given a period of 2 months to respond
to the Office action.  An extension of time can be obtained only in
accordance with  37 CFR 1.550(c).  Note the  37 CFR 1.136 does not apply
in reexamination proceedings.

If the patent owner fails to file a timely and appropriate response to
any Office action, the reexamination proceeding will be terminated,
unless the response is "not fully responsive" as defined in MPEP Section 
2266.01 or is an "informal submission" as defined in MPEP Section 
2266.02.  After the proceeding is terminated, the Commissioner will
proceed to issue a reexamination certificate.

---SECTION---2266.01 Submission Not Fully Responsive to Non-final Office
Action

A response by the patent owner will be considered not fully responsive
to a non-final Office action where:

(A) a bona fide response to an examiner's non-final action is filed;

(B) before the expiration of the permissible response period;

(C) but through an apparent oversight or inadvertence, some point
necessary to a full response has been omitted (i.e., some matter or
compliance with some requirement has been omitted).

Where patent owner's amendment or response prior to final rejection is
not fully responsive to an Office action in a reexamination and meets
all of (A) through (C) above, the reexamination proceeding should not be
terminated; but, rather, a practice similar to that of  37 CFR 1.135(c)
(which is directed to applications) may be followed.  The examiner may
treat a patent owner submission which is not fully responsive to a
non-final Office action by:

(A) waiving the deficiencies (if not serious) in the response and acting
on the patent owner submission;

(B) accepting the amendment as a response to the non-final Office action
but notifying the patent owner (via a new Office action setting a new
time period for response) that the omission must be supplied; or

(C) notifying the patent owner that the response must be completed
within the remaining period for response to the non-final Office action
(or within any extension pursuant to  37 CFR 1.550(c)) to avoid
termination of the proceeding under  37 CFR 1.550(d).  This third
alternative should only be used in the very unusual situation where
there is sufficient time remaining in the period for response (including
extensions under  37 CFR 1.550(c)), as is discussed below.

Where a patent owner submission responds to the rejections, objections,
or requirements in a non-final Office action and is a bona fide attempt
to advance the reexamination proceeding to final action, but contains a
minor deficiency (e.g., fails to treat every rejection, objection, or
requirement), the examiner may simply act on the amendment and issue a
new (non-final or final) Office action.  The new Office action may
simply reiterate the rejection, objection, or requirement not addressed
by the patent owner submission or otherwise, indicate that such
rejection, objection, or requirement is no longer applicable.  In the
new Office action, the examiner will identify the part of the previous
Office action which was not responded to and make it clear what is
needed.  Obviously, this course of action would not be appropriate in
instances in which a patent owner submission contains a serious
deficiency (e.g., the patent owner submission does not appear to have
been filed in response to the non-final Office action).

In the usual situation, where the period for response has expired or
there is insufficient time remaining to take corrective action before
the expiration of the period for response, and a patent owner submission
is not fully responsive to a non-final Office action, but is a bona fide
attempt to advance the proceeding to final action, the patent owner
should be given a new time period for response.  The patent owner must
supply the omission within the new time period for response (or any
extensions under  37 CFR 1.550(c) thereof) to avoid termination of the
proceeding under  37 CFR 1.550(d).  The patent owner may also file a
further response as permitted under  37 CFR 1.111.  This is analogous to 
37 CFR 1.135(c) for an application.  Where such a bona fide response to
a non-final Office action is timely filed, but through an apparent
oversight or inadvertence some point necessary to a complete response
has been omitted, the examiner, as soon as he or she notes the omission,
may issue a new Office action requiring the patent owner to supply the
omission within a specified time period, usually 1 month.

Form paragraph 22.14 may be used where a bona fide response is not
entirely responsive to a non-final Office action.

22.14 Submission Not Fully Responsive to Non-Final Office Action

The communication filed on   [1] is not fully responsive to the prior
Office action. [2].  The response appears to be bona fide, but through
an apparent oversight or inadvertence, consideration of some matter or
compliance with some requirement has been omitted.  Patent owner is
required to deal with the omission to thereby provide a full response to
the prior Office action.

A shortened statutory period for response to this letter is set to
expire ONE MONTH, or THIRTY DAYS, whichever is longer, from the mailing
date of this letter.  If patent owner fails to timely deal with the
omission and thereby provide a full response to the prior Office action,
the present reexamination proceeding will be terminated.  37 CFR
1.550(d).

Examiner Note:

1. In bracket 2, the examiner should explain the nature of the omitted
point necessary to complete the response, i.e., what part of the Office
action was not responded to.  The examiner should also make it clear
what is needed to deal with the omitted point.

2. This paragraph may be used for a patent owner communication that is
not completely responsive to the outstanding (i.e., prior) Office
action.  See MPEP Section  2266.01.

3. This practice does not apply where there has been a deliberate
omission of some necessary part of a complete response.

4. This paragraph is only used for a response made prior to final
rejection. After final rejection, an advisory Office action and Form
PTOL 467 should be used, and the patent owner informed of any non-entry
of the amendment.

In the very unusual situation where there is sufficient time remaining
in the period for response (including extensions under  37 CFR
1.550(c)), the patent owner may simply be notified that the omission
must be supplied within the remaining time period for response.  This
notification should be made, by telephone, and an interview summary
record (see MPEP Section  713.04) must be completed and entered into the
file of the reexamination proceeding to provide a record of such
notification.  When notification by telephone is not possible, the
procedure set forth above should be followed.

The practice of giving the patent owner a time period to supply an
omission in a bona fide response (which is analogous to that set forth
in  37 CFR 1.135(c) for an application) does not apply where there has
been a deliberate omission of some necessary part of a complete
response; rather, it is applicable only when the missing matter or lack
of compliance is considered by the examiner as being "inadvertently
omitted."  Once an inadvertent omission is brought to the attention of
the patent owner, the question of inadvertence no longer exists. 
Therefore, a second Office action giving another new (1 month) time
period to supply the omission would not be appropriate.  However, if
patent owner's response to the notification of the omission raises a
different issue of a different inadvertently omitted matter, a second
Office action may be given.

This practice authorizes, but does not require, an examiner to give the
patent owner a new time period to supply an omission.  Thus, where the
examiner concludes that the patent owner is attempting to abuse the
practice to obtain additional time for filing a response, the practice
should not be followed.  If time still remains for response, the
examiner may telephone the patent owner and inform the patent owner that
the response must be completed within the period for response to the
non-final Office action or within any extension pursuant to  37 CFR
1.550(c) to avoid termination of the reexamination proceeding.

The practice of giving the patent owner a time period to supply an
omission in a bona fide response does not apply after a final Office
action.  If a bona fide response to an examiner's action is filed after
final rejection (before the expiration of the permissible response
period), but through an apparent oversight or inadvertence, some point
necessary to fully respond has been omitted, the examiner should not
issue (to the patent owner) a notice of failure to fully respond. 
Rather, an advisory Office action (form PTOL-467) should be issued with
an explanation of the omission.  The time period set in the final
rejection continues to run and is extended by 1 month if the response is
the first response after the final rejection in accordance with the
guidelines set forth in MPEP Section  2265.  See also MPEP Section 
2272.

Amendments after final rejection are approved for entry only if they
place the proceeding in condition for issuance of a reexamination
certificate or in better form for appeal.  Otherwise, they are not
approved for entry.  See MPEP Section  714.12 and Section  714.13. 
Thus, an amendment after final rejection should be denied entry if some
point necessary for a complete response under  37 CFR 1.113 was omitted,
even where the omission was through an apparent oversight or
inadvertence.  Where a submission after final Office action or appeal
(e.g., an amendment filed under  37 CFR 1.116) does not place the
proceeding in condition for issuance of a reexamination certificate, the
period for response continues to run until a response under  37 CFR
1.113 (i.e., a Notice of Appeal or an amendment that places the
proceeding in condition for issuance of a reexamination certificate) is
filed.  The nature of the omission is immaterial.  The examiner cannot
give the patent owner a time period to supply the omission.

The examiner has the authority to enter the response, withdraw the final
Office action, and issue a new Office action, which may be a final
Office action, if appropriate, or an action closing prosecution in an
otherwise allowable application under Ex parte Quayle, 25 USPQ 74, 1935
C.D. 11 (Comm'r Pat. 1935), if appropriate.  This course of action is
within the discretion of the examiner.  However, the examiner should
recognize that substantial patent rights will be at issue with no
opportunity for the patent owner to refile under  37 CFR 1.53(b) or
1.53(d) in order to continue prosecution.  Thus, where the time has
expired for response and the amendment submitted would place the
proceeding in condition for issuance of a reexamination certificate
except for an omission through apparent oversight or inadvertence, the
examiner should follow this course of action.

---SECTION---2266.02 Examiner Issues Notice of Defective Paper in
Reexamination

Even if the substance of a submission is complete, the submission can
still be defective, i.e., an "informal submission."  Defects in the
submission can be, for example:

(A) The paper filed does not include proof of service;

(B) The paper filed is unsigned;

(C) The paper filedis signed by a person who is not of record;

(D) The amendment filed by the patent owner does not comply with  37 CFR
1.530(d).

Where a submission made prior to final rejection is defective
(informal), form PTOL-475 is used to provide notification of the defects
present in the submission.  In many cases, it is only necessary to check
the appropriate box on the form and fill in the blanks.  However, if one
of the entries on form PTOL-475 needs further clarification (such as the
specifics of why the amendment does not comply with  37 CFR 1.530(d)),
the additional information should be set forth on a separate sheet of
paper which is then attached to the form.

The defects identified above as (A) through (D) are specifically
included in form PTOL-475.  If the submission contains a defect other
than those specifically included on the form, the "other" box on the
form is to be checked and the defect explained in the space provided for
the explanation.  For example, a response might be presented on easily
erasable paper, and thus, a new submission would be needed.

A 1-month time period will be set in form PTOL-475 for correction of the
defect(s).  Extension of time to correct the defect(s) may be requested
under  37 CFR 1.550(c).

If a defective (informal) response to an examiner's action is filed
after final rejection (before the expiration of the permissible response
period), the examiner should not issue a form PTOL-475 notification to
the patent owner.  Rather, an advisory Office action (form PTOL-467)
should be issued with an explanation of the defect (informality).  The
time period set in the final rejection continues to run and is extended
by 1 month if the response is the first response after the final
rejection in accordance with the guidelines set forth in MPEP Section 
2265.  See also MPEP Section  2272.

---SECTION---2266.03 Service of Papers

37 CFR 1.510 Request for reexamination.

                  +++    

(b) Any request for reexamination must include the following parts:

                  +++    

(5) A certification that a copy of the request filed by a person other
than the patent owner has been served in its entirety on the patent
owner at the address as provided for in Section  1.33(c). The name and
address of the party served must be indicated. If service was not
possible, a duplicate copy must be supplied to the Office.

                  +++    

37 CFR 1.550 Conduct of reexamination proceedings.

                  +++    

(e) The reexamination requester will be sent copies of Office actions
issued during the reexamination proceeding.  After filing of a request
for reexamination by a third party requester, any document filed by
either the patent owner or the third party requester must be served on
the other party in the reexamination proceeding in the manner provided
by Section  1.248.  The document must reflect service or the document
may be refused consideration by the Office.

(1) The active participation of the reexamination requester ends with
the reply pursuant to Section  1.535, and no further submissions on
behalf of the reexamination requester will be acknowledged or
considered.  Further, no submissions on behalf of any third parties will
be acknowledged or considered unless such submissions are:

(i) In accordance with Section  1.510; or

(ii) Entered in the patent file prior to the date of the order to
reexamine pursuant to Section  1.525.

(2) Submissions by third parties, filed after the date of the order to
reexamine pursuant to Section  1.525, must meet the requirements of and
will be treated in accordance with Section  1.501(a).

Any document filed, i.e., any submission made by either the patent owner
or a third party requester, must be served on every other party in the
reexamination proceeding.  Papers filed in which no proof of service is
included (where proof of service is required) may be denied
consideration.  Where no proof of service is included, the clerk should
immediately contact the party making the submission by telephone to see
whether the indication of proof of service was inadvertently omitted
from the submission but there was actual service.

If service was in fact made, the party making the submission should be
advised to submit a supplemental paper indicating the manner and date of
service.  The clerk should enter the submission for consideration, and
annotate the submission with:

"Service confirmed by [name of person] on [date]"

If no service was made, or the party making the submission cannot be
contacted, the submission is placed in the reexamination file and
normally is not considered.  The clerk should enter the submission on
the contents of the file wrapper and place an "(N/E)" next to it.  The
"(N/E)" can be crossed through if the appropriate service is later made. 
The submission itself shall be annotated with "no service," which also
can be crossed through if the appropriate service is later made.

If the party making the submission cannot be contacted, a Notice of
Defective Paper (PTOL-475), giving 1 month to complete the paper, with a
supplemental paper indicating the manner and date of service, will be
mailed to the party.

If it is known that service of a submission was not made, notice of the
requirement for service of copy is given (to the party that made the
submission), and a 1 month period is set.  Form paragraph 22.15 may be
used to give notice.

22.15 Lack of Service - 37 CFR 1.550(e)

The submission filed on [1] is defective because it appears that the
submission was not served on the   [2].  After the filing of a request
for reexamination by a third party requester, any document filed by
either the patent owner or the third party requester must be served on
the other party in the reexamination proceeding in the manner provided
in  37 CFR 1.248.  See  37 CFR 1.550(e).

It is required that service of the submission be made, and a certificate
of service be provided to the Office within a shortened statutory period
of ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date
of this letter.  If service of the submission is not timely made, the
submission may be denied consideration.

Examiner Note:

1. This paragraph may be used where a submission to the Office was not
served as required in a third party requester reexamination proceeding.

2. In bracket 2, insert --patent owner-- or --third party requester--,
whichever is appropriate.

The cover sheet to be used for mailing the notice will be form PTOL-473.

The failure of a party to serve the submission in response to the notice
will have the following consequences:

(A) For a patent owner statement or a third party reply, the submission
may be refused consideration by the Office.  Where consideration is
refused, the submission will not be addressed in the reexamination
proceeding other than to inform parties of the lack of consideration
thereof;

(B) For a patent owner response to an Office action, the response may be
refused consideration by the Office.  Where consideration of a response
is refused, the proceeding will be terminated in accordance with  37 CFR
1.550(d), unless the patent owner has otherwise completely responded to
the Office action.

See MPEP Section  2220 as to the initial third party request.

See MPEP Section  2249 as to the patent owner statement.

See MPEP Section  2251 as to third party reply.

See MPEP Section  2266 as to patent owner responses to an Office action.  

---SECTION---2267 Handling of Inappropriate or Untimely Filed Papers

The applicable regulations (37 CFR 1.501(a), 1.550(e)) provide that
certain types of correspondence will not be considered or acknowledged
unless timely received. In every case, a decision is required as to the
type of paper and whether it is timely.

The return of inappropriate submissions complies with the regulations
that certain papers will not be considered and also reduces the amount
of paper which would ultimately have to be stored with the patent file.

DISPOSITION OF PAPERS

Where papers are filed during reexamination proceedings which are
inappropriate because of some defect, such papers will either be
returned to the sender or forwarded to one of three files, the
"Reexamination File," the "Patent File," or the "Storage File."  Any
papers returned to the sender from an examining group must be
accompanied by a letter indicating signature and approval of the Group
Director.

TYPES OF PAPERS RETURNED WITH COMMISSIONER'S OR GROUP DIRECTOR'S
APPROVAL REQUIRED



Filed by Owner	A. Premature Response by Owner -

Section  1.530(a),  Section  1.540	Where the patent owner is NOT the
requester, any response or amendment filed by owner prior to an order to
reexamine is premature and will be returned and will not be considered.

Section  1.550(e)	B. Paper Submitted on Behalf of Third Party -

	Submission filed on behalf of a third party will be returned and will
not be considered. Where third party paper is submitted as part of a
patent owner response, see MPEP Section  2254 and Section 2266.



Filed by Requester	A. No Statement Filed by Owner -

Section  1.535	If a patent owner fails to file a statement within the
prescribed limit, any reply by the requester is inappropriate and will
be returned and will not be considered.

	B. Late Response by Requester -

Section  1.535, Section  1.540	Any response subsequent to 2 months from
the date of service of the patent owner's statement will be returned and
will not be considered.

	C. Additional Response by Requester -

Section  1.550(e)	The active participation of the reexamination
requester ends with the reply pursuant to Section  1.535.  Any further
submission on behalf of requester will be returned and will not be
considered.



Filed by Third Party	

Section  1.501, Section  1.565(a)	Unless a paper submitted by a third
party raises only issues appropriate under Section  1.501, or consists
solely of a prior decision on the patent by another forum, e.g., a court
(see MPEP Section  2207,  Section  2282, and Section  2286), it will be
returned to an identified third party or destroyed if the submitter is
unidentified.

	The "Reexamination File" and the "Patent File" will remain together in
a central storage area prior to the examiner taking up the case for a
determination on whether to reexamine.  After the files have been
forwarded to the examiner for the determination, the "Patent File" will
be maintained in the assigned examiner's room until the reexamination
proceeding is terminated.

TYPES OF DEFECTIVE PAPERS TO BE LOCATED IN THE "REEXAMINATION FILE"



Filed by Owner	A. Unsigned Papers -

Section  1.33	Papers filed by owner which are unsigned or signed by less
than all of the owners (no attorney of record or acting in
representative capacity).

	B. No Proof of Service -

Section  1.248	Papers filed by the patent owner in which no proof of
service on requester is included and proof of service is required may be
denied consideration.

	C. Untimely Papers -

Section  1.530(b),  Section  1.540	Where owner has filed a paper which
is untimely, that is, it was filed after the period set for response,
the paper will not be considered.



Filed by Requester	A. Unsigned Papers -

  		Papers filed by requester which are unsigned will not be considered.

	B. No Proof of Service -

Section  1.510(b)(5), Section  1.33, Section  1.248	Papers filed by
requester in which no proof of service on owner is included and where
proof of service is required may be denied consideration.

  PAPERS LOCATED IN THE "STORAGE FILE"

The  "Storage Files" will be maintained separate and apart from the
other two files and at a location selected by the Group Director.  For
example, the Group Director may want to locate the "Storage File" in a
central area in the group as with the reexamination clerk or in his or
her own room.



Section  1.501	Citations by Third Parties

Section  1.550(e)	Submissions by third parties based solely on prior art
patents or publications filed after the date of the order to reexamine
are not entered into the patent file but delayed until the reexamination
proceedings have been terminated.

Proper timely filed citations by third parties (i.e., filed prior to the
order) are placed in the "Patent File."

---SECTION---2268 Petition for Entry of Late Papers

Due to the "special dispatch" provision of  35 U.S.C. 305, it is
necessary and appropriate that the Office adhere strictly to the time
limit set by the Rules. However, due to the fact substantial property
rights are involved in patents undergoing reexamination, the Office will
consider, in appropriate circumstances, petitions showing unavoidable
delay under  35 U.S.C. 133 where untimely papers are filed subsequent to
the order for reexamination (37 CFR 1.525). Such petitions will be
decided in the Office of the Deputy Assistant Commissioner for Patent
Policy and Projects.  Any such petition must detail the specific
circumstances necessitating the showing of unavoidable delay and provide
evidence to support the request.

Under ordinary circumstances, the failure to timely file a statement
pursuant to  37 CFR 1.530 or a reply pursuant to  37 CFR 1.535 would not
constitute adequate basis to justify a showing of unavoidable delay
regardless of the reasons for the failure since no rights are lost by
the failure to file these documents. However, the failure to timely
respond to an Office action rejecting claims may, in rare circumstances,
justify such a showing since rights may be lost by the failure to timely
respond. In this regard see In re Katrapat, 6 USPQ2d 1863 (Comm'r Pat.
1988) and In re Egbers, 6 USPQ2d 1869 (Comm'r Pat. 1988).

---SECTION---2269 Reconsideration

After response by the patent owner (37 CFR 1.111), the patent under
reexamination will be reconsidered and the patent owner notified if
claims are rejected or objections or requirements made. The patent owner
may respond to such Office action with or without amendment and the
patent under reexamination will be again considered, and so on
repeatedly unless the examiner has indicated that the action is final.
See  37 CFR 1.112.  Any amendment after the second Office action, which
will normally be final as provided for in MPEP Section  2271, must
ordinarily be restricted to the rejection or to the objection or
requirement made.

---SECTION---2270 Clerical Handling

The person designated as the reexamination clerk will handle most of the
initial clerical processing of the reexamination file.

Amendments which comply with  37 CFR 1.530(d) will be entered for
purposes of reexamination in the reexamination file wrapper.  See MPEP
Section  2234 and Section  2250 for manner of entering amendments.

For entry of amendments in a merged reissue- reexamination proceeding,
see MPEP Section  2283 and Section  2285.

Where an amendment is submitted in proper form and it is otherwise
appropriate to enter the amendment, the amendment will be entered for
purposes of the reexamination proceeding, even though the amendment does
not have legal effect until the certificate is issued. Any "new matter"
amendment to the disclosure (35 U.S.C. 132) will be required to be
canceled, and claims containing new matter will be rejected under  35
U.S.C. 112.  A "new matter" amendment to the drawing is ordinarily not
entered.  See MPEP Section  608.04,  Section  608.04(a) and (c).

---SECTION---2271 Final Action

Before a final action is in order, a clear issue should be developed
between the examiner and the patent owner. To bring the prosecution to a
speedy conclusion and at the same time deal justly with the patent owner
and the public, the examiner will twice provide the patent owner with
such information and references as may be useful in defining the
position of the Office as to unpatentability before the action is made
final. Initially, the decision ordering reexamination of the patent will
contain an identification of the new questions of patentability that the
examiner considers to be raised by the prior art considered. In
addition, the first Office action will reflect the consideration of any
arguments and/or amendments contained in the request, the owner's
statement filed pursuant to  37 CFR 1.530, and any reply thereto by the
requester, and should fully apply all relevant grounds of rejection to
the claims.

The statement which the patent owner may file under  37 CFR 1.530 and
the response to the first Office action should completely respond to
and/or amend with a view to avoiding all outstanding grounds of
rejection.

It is intended that the second Office action in the reexamination
proceeding following the decision ordering reexamination will be made
final in accordance with the guidelines set forth in MPEP Section 
706.07(a). The examiner should not prematurely cut off the prosecution
with a patent owner who is seeking to define the invention in claims
that will offer the patent protection to which the patent owner is
entitled.  However, both the patent owner and the examiner should
recognize that a reexamination proceeding may result in the final
cancellation of claims from the patent and that the patent owner does
not have the right to renew or continue the proceedings by refiling
under  37 CFR 1.53(b) or 1.53(d) or former  37 CFR 1.60 or 1.62.
Complete and thorough actions by the examiner coupled with complete
responses by the patent owner, including early presentation of evidence
under  37 CFR 1.131 or 1.132, will go far in avoiding such problems and
reaching a desirable early termination of the reexamination proceeding.
In making a final rejection, all outstanding grounds of rejection of
record should be carefully reviewed and any grounds or rejection relied
on should be reiterated. The grounds of rejection must (in the final
rejection) be clearly developed to such an extent that the patent owner
may readily judge the advisability of an appeal. However, where a single
previous Office action contains a complete statement of a ground of
rejection, the final rejection may refer to such a statement and also
should include a rebuttal of any arguments raised in the patent owner's
response. The final rejection letter should conclude with one of form
paragraphs 22.09 or 22.10.

22.09 Reexamination - Action Is Final

THIS ACTION IS MADE FINAL.

A shortened statutory period for response to this action is set to
expire [1] from the mailing date of this action.

Extensions of time under  37 CFR 1.136(a) do not apply in reexamination
proceedings.  The provisions of  37 CFR 1.136 apply only to "an
applicant" and not to parties in a reexamination proceeding.  Further,
in  35 U.S.C. 305 and in  37 CFR 1.550(a), it is required that
reexamination proceedings "will be conducted with special dispatch
within the Office."

Extensions of time in reexamination proceedings are provided for in  37
CFR 1.550(c).  A request for extension of time must be filed on or
before the day on which a response to this action is due.  The mere
filing of a request will not effect any extension of time.  An extension
of time will be granted only for sufficient cause, and for a reasonable
time specified.

The filing of a timely first response to this final rejection will be
construed as including a request to extend the shortened statutory
period for an additional month, which will be granted even if previous
extensions have been granted.  In no event, however, will the statutory
period for response expire later than SIX MONTHS from the mailing date
of the final action.  See MPEP Section  2265.

Examiner Note:

1. This form paragraph may be used only in reexamination proceedings.

2. In bracket 1, insert the appropriate period for response, which is
normally TWO (2) MONTHS.  In court sanctioned or stayed litigation
situations a ONE (1) MONTH period should be set.

22.10 Reexamination - Action Is Final, Necessitated by Amendment

Patent owner's amendment filed [1] necessitated the new grounds of
rejection presented in this Office action.  Accordingly, THIS ACTION IS
MADE FINAL.  See MPEP Section  706.07(a).

A shortened statutory period for response to this action is set to
expire [2] from the mailing date of this action.

Extensions of time under  37 CFR 1.136(a) do not apply in reexamination
proceedings.  The provisions of  37 CFR 1.136 apply only to "an
applicant" and not to parties in a reexamination proceeding.  Further,
in  35 U.S.C. 305 and in  37 CFR 1.550(a), it is required that
reexamination proceedings "will be conducted with special dispatch
within the Office."

Extensions of time in reexamination proceedings are provided for in  37
CFR 1.550(c).  A request for extension of time must be filed on or
before the day on which a response to this action is due.  The mere
filing of a request will not effect any extension of time.  An extension
of time will be granted only for sufficient cause, and for a reasonable
time specified.

The filing of a timely first response to this final rejection will be
construed as including a request to extend the shortened statutory
period for an additional month, which will be granted even if previous
extensions have been granted.  In no event, however, will the statutory
period for response expire later than SIX MONTHS from the mailing date
of the final action.  See MPEP Section  2265.

Examiner Note:

1. This form paragraph may be used only in reexamination proceedings.

2. In bracket 1, insert filing date of amendment.

3. In bracket 2, insert the appropriate period for response, which is
normally TWO (2) MONTHS.  In court sanctioned or stayed litigation
situations a ONE (1) MONTH period should be set.

As with all other Office correspondence on the merits in a reexamination
proceeding, the final Office action must be signed by a primary
examiner.

---SECTION---2272 After Final Practice

It is intended that prosecution before the examiner in a reexamination
proceeding will be concluded with the final action. Once a final
rejection that is not premature has been entered in a reexamination
proceeding, the patent owner no longer has any right to unrestricted
further prosecution. Consideration of amendments submitted after final
rejection will be governed by the strict standards of  37 CFR 1.116.
Note, however, the patent owner is entitled to know the examiner's
ruling on a timely response filed after final rejection before being
required to file a notice of appeal. Accordingly, the period for
response to the final rejection should be appropriately extended in the
examiner's advisory action. See Groz & Sohne v. Quigg, 10 USPQ2d 1787
(D.D.C. 1988). The period for response may not be extended to run past 6
months from the date of the final rejection. Both the examiner and the
patent owner should recognize that substantial patent rights will be at
issue with no opportunity for the patent owner to refile under  37 CFR
1.53(b) or 1.53(d) or former  37 CFR 1.60 or 1.62 in order to continue
prosecution. Accordingly, both the examiner and the patent owner should
identify and develop all issues prior to the final Office action,
including the presentation of evidence under  37 CFR 1.131 and 1.132.

FINAL REJECTION - TIME FOR RESPONSE

The statutory period for response in a reexamination proceeding will
normally be two (2) months. If a response to the final rejection is
filed, the period for response typically will be extended to run 3
months from the date of the final rejection in the advisory action
unless a previous extension of time has been granted or the advisory
action cannot be mailed in sufficient time. It should be noted that the
filing of any timely first response to a final rejection (even an
informal response or even a response that is not signed) will result in
the extension of the shortened statutory period for an additional month.
See also MPEP Section  2265.

ACTION BY EXAMINER

It should be kept in mind that a patent owner cannot, as a matter of
right, amend any finally rejected claims, add new claims after a final
rejection, or reinstate previously canceled claims. A showing under  37
CFR 1.116(b) is required and will be evaluated by the examiner for all
proposed amendments after final rejection except where an amendment
merely cancels claims, adopts examiner's suggestions, removes issues for
appeal, or in some other way requires only a cursory review by the
examiner. An amendment filed at any time after final rejection but
before an appeal brief is filed, may be entered upon or after filing of
an appeal provided the total effect of the amendment is to (1) remove
issues for appeal, and/or (2) adopt examiner suggestions.

The first proposed amendment after final action in a reexamination
proceeding will be given sufficient consideration to determine whether
it places all the claims in condition where they are patentable and/or
whether the issues on appeal are reduced or simplified. Unless the
proposed amendment is entered in its entirety, the examiner will briefly
explain the reasons for not entering a proposed amendment. For example,
if the claims as amended present a new issue requiring further
consideration or search, the new issue should be identified and a brief
explanation provided as to why a new search or consideration is
necessary. The patent owner should be notified if certain portions of
the amendment would be entered if a separate paper was filed containing
only such amendment.

Any second or subsequent amendment after final will be considered only
to the extent that it removes issues for appeal or puts a claim in
obvious patentable condition.

Since patents undergoing reexamination cannot become abandoned and
cannot be refiled, and since the holding of claims unpatentable and
canceled in a certificate is absolutely final, it is appropriate that
the examiner consider the feasibility of entering amendments touching
the merits after final rejection or after appeal has been taken, where
there is a showing why the amendments are necessary and a suitable
reason is given why they were not earlier presented.

The practice of giving the patent owner a time period to supply an
omission in a bona fide response (as set forth in MPEP Section  2266.01)
does not apply after a final Office action.  If a bona fide response to
an examiner's action is filed after final rejection (before the
expiration of the permissible response period), but through an apparent
oversight or inadvertence, some point necessary to fully respond has
been omitted, the examiner should not issue (to the patent owner) a
notice of failure to fully respond.  Rather, an advisory Office action
(form PTOL-467) should be issued with an explanation of the omission. 
The time period set in the final rejection continues to run and is
extended by 1 month if the response is the first response after the
final rejection in accordance with the guidelines set forth in MPEP
Section  2265. 

Likewise, the practice of notifying the patent owner of the defects
present in a submission via form PTOL-475 and setting a time period for
correction of the defect(s) (as set forth in MPEP Section  2266.02) does
not apply after a final Office action.  If a defective (informal)
response to an examiner's action is filed after final rejection (before
the expiration of the permissible response period), the examiner should
not issue a form PTOL-475 notification to the patent owner.  Rather, an
advisory Office action (form PTOL-467) should be issued with an
explanation of the defect (informality).  The time period set in the
final rejection continues to run and is extended by 1 month if the
response is the first response after the final rejection.

---SECTION---2273 Appeal in Reexamination

35 U.S.C. 306 Appeal.

The patent owner involved in a reexamination proceeding under this
chapter may appeal under the provisions of section 134 of this title,
and may seek court review under the provisions of sections 141 to 145 of
this title, with respect to any decision adverse to the patentability of
any original or proposed amended or new claim of the patent.

A patent owner who is dissatisfied with the primary examiner's decision
in the second or final rejection of his or her claims may appeal to the
Board of Patent Appeals and Interferences for review of the rejection by
filing a Notice of Appeal within the required time. A Notice of Appeal
need not be signed by the patent owner or his or her attorney or agent. 
See  37 CFR 1.191(b).  The fee required by  37 CFR 1.17(b) must
accompany the Notice of Appeal.  See  37 CFR 1.191(a).

The period for filing the Notice of Appeal is the period set for
response in the last Office action which is normally 2 months. The
timely filing of a first response to a final rejection having a
shortened statutory period for response is construed as including a
request to extend the period for response an additional month, even if
an extension has been previously granted, as long as the period for
response does not exceed 6 months from the date of the final rejection.
The normal ex parte appeal procedures set forth at  37 CFR 1.191 through 
37 CFR 1.198 apply in reexamination, except as pointed out in this
Chapter. A third party requester cannot appeal or otherwise participate
in the appeal.

The reexamination statute does not provide for review of a patentability
decision favoring the patentee. Greenwood v.   Seiko Instruments, 8
USPQ2d 1455 (D.D.C. 1988).

See MPEP Section  1205 for a discussion of the requirements for a proper
appeal.  However, note that in the unusual circumstances where an appeal
is defective (e.g., no proof of service is included, it was filed for
the wrong proceeding), patent owner should not be advised by the
examiner to obtain an extension of time under  37 CFR 1.136(a), because
an extension of time under  37 CFR 1.136 cannot be obtained in a
reexamination proceeding.

Where a notice of appeal is defective, the patent owner will be so
notified.  Form PTOL-497 would be used to provide the notification.  A
1-month period will be provided for the patent owner to cure the
defect(s) in the appeal.

If the patent owner does not timely file a notice of appeal and/or does
not timely file the appropriate appeal fee, the patent owner will be
notified that the appeal is dismissed.  Form PTOL-497 would be used to
provide the notification.  The reexamination proceeding is then
terminated, and a Notice of Intent to Issue Reexamination Certificate
will subsequently be issued indicating the status of the claims at the
time of final rejection.  See MPEP Section  2287.

---SECTION---2274 Appeal Brief

AMENDMENT

Where the appeal brief is not filed, but within the period allowed for
filing the brief an amendment is presented which places the claims of
the patent under reexamination in a patentable condition, the amendment
may be entered. Amendments should not be included in the appeal brief.

As to separate amendments, i.e., amendments not included with the appeal
brief, filed with or after the appeal, see MPEP Section  1207.

TIME FOR FILING APPEAL BRIEF

The time for filing the appeal brief is 2 months from the date of the
appeal or alternatively, within the time allowed lowed for response to
the action appealed from, if such time is later.

EXTENSION OF TIME FOR FILING APPEAL BRIEF

In the event that the patent owner finds that he or she is unable to
file a brief within the time allowed by the rules, he or she may file a
petition without any fee, to the examining group, requesting additional
time (usually 1 month), and give reasons for the request. The petition
should be filed in duplicate and contain the address to which the
response is to be sent. If sufficient cause is shown and the petition is
filed prior to the expiration of the period sought to be extended (37
CFR 1.550(c)), the Group Director is authorized to grant the extension
for up to 1 month. Requests for extensions of time for more than 1 month
will also be decided by the Group Director, but will not be granted
unless extraordinary circumstances are involved; e.g., death or
incapacitation of the patent owner. The time extended is added to the
last calendar day of the original period, as opposed to being added to
the day it would have been due when said last day is a Saturday, Sunday,
or Federal holiday.

FAILURE TO TIMELY FILE APPEAL BRIEF

Failure to file the brief and/or the appeal fee within the permissible
time will result in dismissal of the appeal.  Form PTOL-497 is used to
notify the patent owner that the appeal is dismissed.  The reexamination
proceeding is then terminated, and a Notice of Intent to Issue
Reexamination Certificate (see MPEP Section  2287) will subsequently be
issued indicating the status of the claims at the time of appeal.

REQUIREMENTS FOR THE APPEAL BRIEF

A fee as set forth in  37 CFR 1.17(c) is required when the appeal brief
is filed for the first time in a particular reexamination proceeding, 
35 U.S.C. 41(a).  37 CFR 1.192 provides that the appellant shall file a
brief of the authorities and arguments on which he or she will rely to
maintain his or her appeal, including a concise explanation of the
invention which must refer to the specification by page and line number,
and to the drawing, if any, by reference characters, and a copy of the
claims involved. 37 CFR 1.192(a) requires the submission of three copies
of the appeal brief.  In addition, where the request for reexamination
was filed by a third party requester, a copy of the brief must be served
on that third party requester.

In the case of a merged proceeding (see MPEP Section  2283 and Section 
2285), one copy of the brief should be provided for each reexamination
and reissue in the merged proceeding, and two additional copies of the
brief should also be provided.  In addition, a copy of the brief must be
served on any third party requesters who are part of the merged
proceeding.

For the sake of convenience, the copy of the claims involved should be
double spaced and should start on a new page. Note that claims on appeal
in reexamination proceedings should include all underlining and
bracketing necessary to reflect the changes made to the original claims
throughout the prosecution of the reexamination.  In addition, any new
claims added in the reexamination should be completely underlined.  This
represents a departure from the procedure set forth in MPEP Section 
1206 for applications.

The brief, as well as every other paper relating to an appeal, should
indicate the number of the examining group to which the reexamination is
assigned and the reexamination control number. When the brief is
received, it is forwarded to the examining group where it is entered in
the file and referred to the examiner.

Patent owners are reminded that their briefs in appeal cases must be
responsive to every ground of rejection stated by the examiner.  A reply
brief, if filed, shall be entered, except that amendments or affidavits
or other evidence are subject to  37 CFR 1.116 and 1.195.  See  37 CFR
1.193(b)(1).

It is essential that the Board of Patent Appeals and Interferences
should be provided with a brief fully stating the position of the
appellant with respect to each issue involved in the appeal so that no
search of the record is required in order to determine that position.
The fact that appellant may consider a ground to be clearly improper
does not justify a failure on the part of the appellant to point out to
the Board the reasons for that view in the brief.

See MPEP Section  1206 for further discussion of the requirements for an
appeal brief.

DEFECTIVE APPEAL BRIEF

Where an appeal brief is defective, the examiner will notify the patent
owner that the brief is defective, using part 4 of form PTOL-497.  A
1-month period is provided for the patent owner to cure the defect(s). 
The nature of the defect(s) is to be explained by the examiner in an
attachment to form PTOL-497.  An example of this is where an appellant
patent owner fails to respond by way of brief to any ground of
rejection, and it appears that the failure is inadvertent.  In such a
case, appellant should be notified by the examiner that he or she is
given 1 month to correct the defect by filing a supplemental brief.

It is important for the examiner to identify any defects in the brief
and give the patent owner 1 month in which to cure the defects.  Where
this procedure has not been followed, the Board of Patent Appeals and
Interferences (Board) should remand the reexamination file to the
examiner for compliance (i.e., for corrective action).

When the record clearly indicates intentional failure to respond by
brief, to any ground of rejection, for example, the examiner should
inform the Board of this fact in his or her answer and merely specify
the claim(s) affected.  Where the failure to respond by brief appears to
be intentional, the Board may dismiss the appeal as to the claims
involved.  Oral argument at the hearing will not remedy such deficiency
of a brief.

The mere filing of any paper whatsoever entitled as a brief cannot
necessarily be considered as compliance with  37 CFR 1.192.  The rule
requires that the brief must set forth the authorities and arguments
relied on, and to the extent that it fails to do so with respect to any
ground of rejection, the appeal as to that ground may be dismissed.  A
distinction must be made between the lack of any argument and the
presentation of arguments that carry no conviction.  In the former case
dismissal is in order, while in the latter case a decision on the merits
is made, although it may well be merely an affirmance based on the
grounds relied on by the examiner.

Appellant must traverse every ground of rejection set forth in the final
rejection.  Oral argument at the hearing will not remedy a deficiency of
failure to traverse a ground of rejection in the brief.  Ignoring or
acquiescing in any rejection, even one based upon formal matters which
could be cured by subsequent amendment, will invite a dismissal of the
appeal as to the claims subject to the rejection.

The reexamination proceedings are considered terminated as of the date
of the dismissal of the appeal.  After the appeal is dismissed, the
examiner will proceed to issue a Notice of Intent to Issue Reexamination
Certificate for the proceeding; see MPEP Section  2287. 

---SECTION---2275 Examiner's Answer

37 CFR 1.193 Examiner's answer and reply brief.

(a)(1) The primary examiner may, within such time as may be directed by
the Commissioner, furnish a written statement in answer to appellant's
brief including such explanation of the invention claimed and of the
references and grounds of rejection as may be necessary, supplying a
copy to appellant.  If the primary examiner finds that the appeal is not
regular in form or does not relate to an appealable action, the primary
examiner shall so state.

(2) An examiner's answer must not include a new ground of rejection, but
if an amendment under Section  1.116 proposes to add or amend one or
more claims and appellant was advised that the amendment under Section 
1.116 would be entered for purposes of appeal and which individual
rejection(s) set forth in the action from which the appeal was taken
would be used to reject the added or amended claim(s), then the appeal
brief must address the rejection(s) of the claim(s) added or amended by
the amendment under Section  1.116 as appellant was so advised and the
examiner's answer may include the rejection(s) of the claim(s) added or
amended by the amendment under Section  1.116 as appellant was so
advised. The filing of an amendment under Section  1.116 which is
entered for purposes of appeal represents appellant's consent that when
so advised any appeal proceed on those claim(s) added or amended by the
amendment under Section  1.116 subject to any rejection set forth in the
action from which the appeal was taken.

(b)(1) Appellant may file a reply brief to an examiner's answer within
two months from the date of such examiner's answer.  See Section 
1.136(b) for extensions of time for filing a reply brief in a patent
application and Section  1.550(c) for extensions of time for filing a
reply brief in a reexamination proceeding. The primary examiner must
either acknowledge receipt and entry of the reply brief or withdraw the
final rejection and reopen prosecution to respond to the reply brief. A
supplemental examiner's answer is not permitted, unless the application
has been remanded by the Board of Patent Appeals and Interferences for
such purpose.

(2) Where prosecution is reopened by the primary examiner after an
appeal or reply brief has been filed, appellant must exercise one of the
following two options to avoid abandonment of the application:

(i) File a reply under Section  1.111, if the Office action is not
final, or a reply under Section  1.113, if the Office action is final;
or

(ii) Request reinstatement of the appeal. If reinstatement of the appeal
is requested, such request must be accompanied by a supplemental appeal
brief, but no new amendments, affidavits (Section Section  1.130, 1.131
or 1.132) or other evidence are permitted.

MPEP Section  1208 through Section  1208.02 relate to preparation of
examiner's answers in appeals. The procedures covered in these sections
apply to appeals in both patent applications and patents undergoing
reexamination proceedings, except as provided for in this Chapter.

Where appellant files a timely reply brief to an examiner's answer, the
examiner may either (1) acknowledge receipt and entry of the reply
brief, or (2) withdraw the final rejection and reopen prosecution to
respond to the reply brief.  A supplemental examiner's answer is not
permitted, unless the application has been remanded by the Board of
Patent Appeals and Interferences for such purposes.

---SECTION---2276 Oral Hearing

If appellant (patent owner) desires an oral hearing, appellant must file
a written request for such hearing accompanied by the fee set forth in 
37 CFR 1.17(d) within 2 months after the date of the examiner's answer.

Where the appeal involves reexamination proceedings, oral hearings are
open to the public as observers unless the appellant (1) requests that
the hearing not be open to the public and (2) presents valid reasons for
such a request.

MPEP Section  1209 relates to oral hearings in appeals in both patent
applications and reexamination proceedings.

---SECTION---2277 Board of Patent Appeals and Interferences Decision

MPEP Section  1213 through Section  1213.03 relate to decisions of the
Board of Patent Appeals and Interferences for both applications and
reexamination proceedings.

---SECTION---2278 Action Following Decision

MPEP Section  1214 through Section  1214.07 provide the procedures to be
followed after the conclusion of the appeal to the Board of Patent
Appeals and Interferences, for both patent applications and
reexamination proceedings.

---SECTION---2279 Appeal to Courts

The normal appeal route provided to the United States Court of Appeals
for the Federal Circuit is available to a patent owner not satisfied
with the decision of the Board of Patent Appeals and Interferences. A
third party may not seek judicial review, Yuasa Battery v. Comm'r, 3
USPQ2d 1143 (D.D.C. 1987).

The normal remedy by civil action under  35 U.S.C. 145 is provided for
the patent owner of a patent in a reexamination proceeding.

While the reexamination statutory provisions do not provide for
participation by any third party requester during any court review, the
courts have permitted intervention by a third party requester in
appropriate circumstances. See Read v. Quigg, 230 USPQ 62 (D.D.C. 1986)
and In re Etter, 756 F.2d 852, 225 USPQ 1 (Fed. Cir. 1985). See also
MPEP Section  1216,  Section  1216.01, and Section  1216.02. A third
party requester who is permitted to intervene in a civil action has no
standing to appeal the court's decision, Boeing Co. v. Comm'r, 853 F.2d
878, 7 USPQ2d 1487 (Fed. Cir. 1988).

---SECTION---2280 Information Material to Patentability in Reexamination
Proceeding

37 CFR 1.555 Information material to patentability in reexamination
proceedings.

(a) A patent by its very nature is affected with a public interest. The
public interest is best served, and the most effective reexamination
occurs when, at the time a reexamination proceeding is being conducted,
the Office is aware of and evaluates the teachings of all information
material to patentability in a reexamination proceeding. Each individual
associated with the patent owner in a reexamination proceeding has a
duty of candor and good faith in dealing with the Office, which includes
a duty to disclose to the Office all information known to that
individual to be material to patentability in a reexamination
proceeding. The individuals who have a duty to disclose to the Office
all information known to them to be material to patentability in a
reexamination proceeding are the patent owner, each attorney or agent
who represents the patent owner, and every other individual who is
substantively involved on behalf of the patent owner in a reexamination
proceeding. The duty to disclose the information exists with respect to
each claim pending in the reexamination proceeding until the claim is
cancelled. Information material to the patentability of a cancelled
claim need not be submitted if the information is not material to
patentability of any claim remaining under consideration in the
reexamination proceeding. The duty to disclose all information known to
be material to patentability in a reexamination proceeding is deemed to
be satisfied if all information known to be material to patentability of
any claim in the patent after issuance of the reexamination certificate
was cited by the Office or submitted to the Office in an information
disclosure statement. However, the duties of candor, good faith, and
disclosure have not been complied with if any fraud on the Office was
practiced or attempted or the duty of disclosure was violated through
bad faith or intentional misconduct by, or on behalf of, the patent
owner in the reexamination proceeding. Any information disclosure
statement must be filed with the items listed in Section  1.98(a) as
applied to individuals associated with the patent owner in a
reexamination proceeding, and should be filed within two months of the
date of the order for reexamination, or as soon thereafter as possible.

(b) Under this section, information is material to patentability in a
reexamination proceeding when it is not cumulative to information of
record or being made of record in the reexamination proceeding, and

(1) It is a patent or printed publication that establishes, by itself or
in combination with other patents or printed publications, a prima facie
case of unpatentability of a claim; or

(2) It refutes, or is inconsistent with, a position the patent owner
takes in:

(i) Opposing an argument of unpatentability relied on by the Office, or

(ii) Asserting an argument of patentability.

A prima facie case of unpatentability of a claim pending in a
reexamination proceeding is established when the information compels a
conclusion that a claim is unpatentable under the preponderance of
evidence, burden-of-proof standard, giving each term in the claim its
broadest reasonable construction consistent with the specification, and
before any consideration is given to evidence which may be submitted in
an attempt to establish a contrary conclusion of patentability.

(c) The responsibility for compliance with this section rests upon the
individuals designated in paragraph (a) of this section and no
evaluation will be made by the Office in the reexamination proceeding as
to compliance with this section. If questions of compliance with this
section are discovered during a reexamination proceeding, they will be
noted as unresolved questions in accordance with Section  1.552(c).

The duty of disclosure in reexamination proceedings applies to the
patent owner; to each attorney or agent who represents the patent owner,
and to every other individual who is substantially involved on behalf of
the patent owner. That duty is a continuing obligation on all such
individuals throughout the proceeding. The continuing obligation during
the reexamination proceeding is that any such individual to whom the
duty applies who is aware of, or becomes aware of, patents or printed
publications which (1) are material to patentability in a reexamination
proceeding, and (2) which have not previously been made of record in the
patent file, must bring such patents or printed publications to the
attention of the Office.

Such individuals are strongly encouraged to file information disclosure
statements, preferably in accordance with  37 CFR 1.98, within two
months of the date of the order to reexamine, or as soon thereafter as
possible, in order to bring the patents or printed publications to the
attention of the Office. An information disclosure statement filed under 
37 CFR 1.555 by the patent owner after the order for reexamination and
before the first action on the merits may be submitted as part of the
statement under  37 CFR 1.530, or it may be filed as a separate paper.
If the information disclosure statement is filed as part of a statement
under  37 CFR 1.530, the submission may include a discussion of the
patentability issues in the reexamination. If, however, the submission
is filed as a separate paper, not part of a statement under  37 CFR
1.530, the submission must be limited to a listing of the information
disclosed and an explanation of its relevance. See  37 CFR 1.98. Any
discussion of the information disclosed relating to patentability issues
in the reexamination would be improper.

Any individual substantially involved in the reexamination proceeding
may satisfy his or her duty by disclosing the information to the
attorney or agent having responsibility for the reexamination proceeding
or to a patent owner acting in his or her own behalf. A patent owner may
satisfy his or her duty by disclosing the information to the attorney or
agent having responsibility for the reexamination proceeding. An
attorney, agent, or patent owner who receives information has no duty to
submit such information if it is not material to patentability in the
reexamination proceeding. See  37 CFR 1.555(b) for the definition of
"material to patentability."

The responsibility of compliance with  37 CFR 1.555 rests on all such
individuals. Any fraud practiced or attempted on the Office or any
violation of the duty to disclosure through bad faith or intentional
misconduct by any such individual results in noncompliance with  37 CFR
1.555(a). This duty of disclosure is consistent with the duty placed on
patent applicants by  37 CFR 1.56.  Any such issues discovered during a
reexamination proceeding will merely be noted as unresolved questions
under  37 CFR 1.552(c).

All such individuals who fail to comply with  37 CFR 1.555(a) do so at
the risk of diminishing the quality and reliability of the reexamination
certificate issuing from the proceeding.

See MPEP Section  2282 for the patent owner's duty to disclose prior or
concurrent proceedings in which the patent is or was involved.

---SECTION---2281 Interviews in Reexamination Proceedings

37 CFR 1.560 Interviews in reexamination proceedings.

(a) Interviews in reexamination proceedings pending before the Office
between examiners and the owners of such patents or their attorneys or
agents of record must be had in the Office at such times,  within Office
hours, as the respective examiners may designate. Interviews will not be
permitted at any other time or place without the authority of the
Commissioner. Interviews for the discussion of the patentability of
claims in patents involved in reexamination proceedings will not be had
prior to the first official action thereon. Interviews should be
arranged for in advance. Requests that reexamination requesters
participate in interviews with examiners will not be granted.

(b) In every instance of an interview with an examiner, a complete
written statement of the reasons presented at the interview as
warranting favorable action must be filed by the patent owner. An
interview does not remove the necessity for response to Office actions
as specified in Section  1.111.

Only ex parte interviews between the examiner and patent owner and/or
the patent owner's representative are permitted. Requests by
reexamination requesters to participate in interviews or to attend
interviews will not be granted.

Unless the Office of the Deputy Assistant Commissioner for Patent Policy
and Projects authorizes otherwise, interviews between examiner and the
owners of patents undergoing reexamination or their attorneys or agents
must be had in the Office at such times, within Office hours, as the
respective examiners may designate.

Interviews for the discussion of the patentability of claims in patents
involved in reexamination proceedings will ordinarily not be had prior
to the first Office action following the order for reexamination and any
submissions pursuant to  37 CFR 1.530 and 1.535. Such interviews will be
permitted prior to the first Office action only where the examiner
initiates the interview for the purpose of providing an amendment which
will make the claims patentable and the patent owner's role is passive. 
The patent owner's role (or patent owner's attorney or agent) is limited
to agreeing to the change or not.  The patent owner should not otherwise
discuss the case on the merits during this interview.

The patent owner's questions on purely procedural matters may be
answered by the examiner at any time during the proceeding.

Where any party who is not the patent owner requests information as to
the merits of a reexamination proceeding, the examiner will not conduct
a personal or telephone interview with that party to provide the
information.  Only questions on strictly procedural matters may be
discussed with that party.  A question by a party who is not the patent
owner relating to when the next Office action will be rendered is
improper as it relates to the merits of the proceeding.

The examiner must complete Interview Summary form PTOL-474 for each
interview held where a matter of substance has been discussed (see MPEP
Section  713.04).  A copy of the form should be given to the patent
owner at the conclusion of the interview. The original should be made of
record in the reexamination file, and a copy should be mailed to any
third party requester.

The general procedure for conducting interviews and recording same is
described at MPEP Section  713.01 - Section  713.04.

PATENT OWNER'S STATEMENT OF THE INTERVIEW

In every instance of an interview with the examiner, a patent owner's
statement of the interview, including a complete written statement of
the reasons presented at the interview as warranting favorable action,
must be filed by the patent owner.  This requirement may not be waived
by the examiner.  Patent owners are encouraged to submit such written
statement as soon after the interview as is possible, and no later than
the next communication to the Office.  Service of the written statement
of the interview on any third party requester is required.

---SECTION---2282 Notification of Existence of Prior or Concurrent
Proceedings and Decisions Thereon

37 CFR 1.565 Concurrent Office proceedings.

(a) In any reexamination proceeding before the Office, the patent owner
shall call the attention of the Office to any prior or concurrent
proceedings in which the patent is or was involved such as
interferences, reissue, reexaminations, or litigation and the results of
such proceedings.

                  +++    

It is important for the Office to be aware of any prior or concurrent
proceedings in which a patent undergoing reexamination is or was
involved, such as interferences, reissues, reexaminations or
litigations, and any results of such proceedings. In accordance with  37
CFR 1.565(a), the patent owner is required to provide the Office with
information regarding the existence of any such proceedings, and the
results thereof, if known. Ordinarily, no submissions of any kind by
third parties filed after the date of the order are placed in the
reexamination or patent file while the reexamination proceeding is
pending. However, in order to ensure a complete file, with updated
status information regarding prior or concurrent proceedings regarding
the patent under reexamination, the Office will, at any time, accept for
placement in the patent file copies from any parties of notices of suits
and other proceedings involving the patent and copies of decisions or
papers filed in the court from litigations or other proceedings
involving the patent. Persons making such submissions must limit the
submissions to the notification, and must not include further arguments
or information. Where a submission is not limited to bare notice of the
prior or concurrent proceedings (in which a patent undergoing
reexamination is or was involved), the submission will be returned by
the Office. Any proper submissions will be promptly placed of record in
the patent file. See MPEP Section  2286 for Office investigation for
prior or concurrent litigation.

---SECTION---2283 Multiple Copending Reexamination Proceedings

37 CFR 1.565 Concurrent Office proceedings.

                  +++    

(c)	If reexamination is ordered while a prior reexamination proceeding
is pending, the reexamination proceedings will be consolidated and
result in the issuance of a single certificate under  1.570.

                  +++    

See MPEP Section  2240 for a discussion as to whether a substantial new
question of patentability is raised by the prior art cited in a second
or subsequent request for reexamination filed while a reexamination
proceeding is pending.

If reexamination is ordered on a request for reexamination while a prior
reexamination proceeding is still pending, the decision on whether or
not to combine the proceedings will be made by the Group Director of the
examining group where the reexamination is pending. The Group Director
may delegate this to the examining group Special Program Examiner. No
decision on combining the reexaminations should be made until such time
as reexamination is actually ordered in the later filed request for
reexamination.

PROCEEDINGS MERGED

If a second request for reexamination is filed where a first certificate
will issue for the first reexamination later than 3 months from the
filing of the second request, the proceedings normally will be merged.
In this situation the second request is decided based on the original
patent claims and if reexamination is ordered, the reexamination
proceedings normally would be merged. If the first reexamination is in
"issue" for publication of a certificate,  it will be withdrawn from
issue. The second reexamination proceeding will be merged with the first
reexamination proceeding and prosecution will continue after the patent
owner and second requester have been given an opportunity to file a
statement and reply, respectively.

If the second request is based upon essentially the same patents or
publications as in the first request or on patents or printed
publications which raise essentially the same issues as those raised in
the first request, and if reexamination is ordered, the examination of
the merged proceeding will continue at the point reached in the first
reexamination proceeding. If, however, new patents or printed
publications are presented in the second request which raise different
questions than those raised in the first request, then prosecution in
the merged reexamination proceeding will be reopened ,if applicable, to
the extent necessary to fully treat the questions raised.

The patent owner will be provided with an opportunity to respond to any
new rejection in a merged reexamination proceeding prior to the action
being made final. See MPEP Section  2271.  If the reexamination
proceedings are combined, a single certificate will be issued based upon
the combined proceedings,  37 CFR 1.565(c).

WHEN PROCEEDING IS SUSPENDED

It may also be desirable in certain situations to suspend a proceeding
for a short and specified period of time. For example, a suspension of a
first reexamination proceeding may be issued to allow time for the
patent owner's statement and the requester's reply in a second
proceeding prior to merging. Further, after the second proceeding has
been ordered, it may be desirable to suspend the second proceeding where
the first proceeding is presently on appeal before a Federal court to
await the court's decision prior to merging.  A suspension will only be
granted in exceptional (extraordinary) instances, because of the
statutory requirements that examination proceed with "special dispatch,"
and the express written approval of the Group Director must be obtained.
Suspension will not be granted when there is an outstanding Office
action.

MERGER OF REEXAMINATIONS

The following guidelines should be observed when two requests for
reexamination directed to a single patent have been filed.

The second request (i.e., Request 2) should be processed as quickly as
possible and assigned to the same examiner to which the first request
(i.e., Request 1) is assigned. Request 2 should be decided immediately
without waiting the usual period.  If Request 2 is denied, ex parte
prosecution of Request 1 should continue. If Request 2 is granted, the
order in the second proceeding should be mailed immediately.  The two
requests should be held in storage until the patent owner's statement
and any reply by the requester have been received in Request 2, or until
the time for filing same expires.  Then, the Group Director or the
Director's delegate will prepare a decision merging the two proceedings.

The decision by the Group Director merging the reexamination proceedings
should include a requirement that the patent owner maintain identical
claims in both files.  It will further require that responses by the
patent owner must consist of a single response, addressed to both files,
filed in duplicate, each bearing a signature, for entry in both files. 
The decision will point out that both files will be maintained as
separate complete files.  The decision of merger will indicate at its
conclusion that the patent owner is given 1 month to provide a
housekeeping amendment to make the claims the same in each file, where
such an amendment is needed.  Where the claims are already the same in
both files, the decision will indicate at its conclusion that an Office
action will be mailed in due course, and that the patent owner need not
take any action at present.  The decision of merger will be mailed
immediately.

Where the merger decision indicates that the patent owner is given 1
month to provide a housekeeping amendment, the file will be held in
storage to await submission of the amendment.  After the amendment is
received, it will be processed by the technical support staff and the
file returned to the examiner, to issue an Office action.  Where the
merger decision indicates that an Office action will follow, the file is
returned to the examiner immediately after the decision, to issue the
action.

Once the file is returned to the examiner for issuance of an Office
action, the examiner should prepare an Office action at the most
advanced point possible for the first proceeding.  Thus, if the first
proceeding is ready for a final rejection and the second proceeding does
not provide any new information which would call for a new ground of
rejection, the examiner should issue a final rejection for the merged
proceeding using the guidelines for the prosecution stage set forth
below.

If the ex parte prosecution stage has not yet begun in Request 1 when
Request 2 is received, Request 1 should be processed to the point where
it is ready for ex parte prosecution. Then, Request 1 is normally held
until Request 2 is granted and is ready for ex parte action following
the statement and reply.  Thereafter, the two proceedings would be
merged.  However, if Request 2 is denied, there would be no merger and
prosecution will be carried out solely on Request 1.  Note that Request
2 should be determined on its own merits and should not rely on nor
refer to the decision in Request 1.

THE PROSECUTION STAGE, AFTER MERGER

When prosecution is appropriate in merged proceedings, a single combined
examiner's action will be prepared.  Each action will contain the
control number of the two proceedings on every page.  A single action
cover form (having both control numbers penned in at the top) will be
provided by the examiner to the clerical staff.  The clerical staff will
copy the action cover form, and then use the PALM printer to print the
appropriate data (1) on the original for the first request and (2) on
the copy for the second request.  The appropriate paper number will be
entered on the action cover form for each file (these numbers will often
be different).  Each requester will receive a copy of the action and
both action cover forms, with the transmission form PTOL-465 placed on
top of the package.  The patent owner will get a copy of both action
cover forms and the action itself.

When a "Notice Of Intent To Issue Reexamination Certificate" (NIRC) is
appropriate, plural notices will be printed. Both reexamination files
will then be processed. The group should prepare the file of the
concurrent proceedings in the manner specified in MPEP Section  2287
before release to Office of Publications.

The above guidelines should be extended to those situations where more
than two requests for reexamination are filed for a single patent.

PROCEEDINGS NOT MERGED

If a second request is filed where the first reexamination certificate
will issue within 3 months from the filing of the second request, the
proceedings normally will not be merged. If the certificate on the first
reexamination proceeding will issue before the decision on the second
request must be decided, the reexamination certificate is allowed to
issue. The second request is then considered based upon the claims in
the patent as indicated in the issued reexamination certificate rather
than the original claims of the patent. In such situations the
proceedings will not be merged. However, it should be noted that where
the second request relies on the same substantial     new question of
patentability that the first reexamination proceeding relies upon, the
question as to merger should be referred to the examining group Special
Program Examiner.  In NO case should a decision on the second request be
delayed beyond its 3-month deadline.

FEES IN MERGED PROCEEDINGS

Where the proceedings have been merged and a paper is filed which
requires payment of a fee (e.g., petition fee, appeal fee, brief fee,
oral hearing fee), only a single fee need be paid.  For example, only
one fee need be paid for an appeal brief even though the brief relates
to merged multiple proceedings and copies must be filed for each file in
the merged proceeding.

PETITION TO MERGE MULTIPLE COPENDING REEXAMINATION PROCEEDINGS

No petition to merge multiple reexamination proceedings is necessary
since the Office will generally, sua sponte, make a decision as to
whether or not it is appropriate to merge the multiple reexamination
proceedings. If any petition to merge the proceedings is filed prior to
the determination (37 CFR 1.515) and order to reexamine (37 CFR 1.525)
on the second request, it will not be considered but will be returned to
the party submitting the same by the examining Group Director. The
decision returning such a premature petition will be made of record in
both reexamination files, but no copy of the petition will be retained
by the Office.  See MPEP Section  2267.

While the patent owner can file a petition to merge the proceedings at
any time after the order to reexamine (37 CFR 1.525) on the second
request, the better practice would be to include any such petition with
the patent owner's statement under  37 CFR 1.530, in the event the
examining Group Director has not acted prior to that date to merge the
multiple reexamination proceedings. If the requester of any of the
multiple reexamination proceedings is not the patent owner, that party
may petition to merge the proceedings as a part of a reply pursuant to 
37 CFR 1.535 in the event the Group Director has not acted prior to that
date to merge the multiple proceedings. A petition to merge the multiple
proceedings which is filed by a party other than the patent owner or one
of the requesters of the reexamination will not be considered but will
be returned to that party by the Group Director as being improper under 
37 CFR 1.550(e).

All decisions on the merits of petitions to merge multiple reexamination
proceedings will be made by the Group Director (or to the examining
group Special Program Examiner, if the Director delegates it to him or
her).

---SECTION---2284 Copending Reexamination and Interference Proceedings

37 CFR 1.565 Concurrent Office proceedings.

                  +++    

(e) If a patent in the process of reexamination is or becomes involved
in an interference, the Commissioner may stay reexamination or the
interference. The Commissioner will not consider a request to stay an
interference unless a motion (Section  1.635) to stay the interference
has been presented to, and denied by, an examiner-in-chief and the
request is filed within ten (10) days of a decision by an
examiner-in-chief denying the motion for a stay or such other time as
the examiner-in-chief may set.

The general policy of the Office is that a reexamination proceeding will
not be delayed, or stayed, because of an interference or the possibility
of an interference. The reasons for this policy are (1) the relatively
long period of time usually required for interferences and (2) the
requirement of  35 U.S.C. 305 that all reexamination proceedings be
conducted with "special dispatch" within the Office. In general, the
Office will follow the practice of making the required and necessary
decisions in the reexamination proceeding and, at the same time, going
forward with the interference to the extent desirable. Decisions in the
interference will take into consideration the status of the
reexamination and what is occurring therein. The decision as to what
actions are taken in the interference will, in general, be taken in
accordance with normal interference practice.

ATTEMPTING TO PROVOKE AN INTERFERENCE WITH A PATENT INVOLVED IN A
REEXAMINATION PROCEEDING

An interference should not be declared between an application and a
patent which is involved in a reexamination proceeding except upon
specific authorization from the Office of the Deputy Assistant
Commissioner for Patent Policy and Projects.  When an amendment seeking
to provoke an interference with a patent involved in a reexamination
proceeding is filed in a pending application, the owner of the patent
must be notified (see  37 CFR 1.607(d)). The applicant must identify the
patent under reexamination with which interference is sought. The
corresponding application claims may be rejected on any applicable
ground including, if appropriate, the prior art cited in the
reexamination proceeding. Prosecution of the application should continue
as far as possible, but if the application is placed in condition for
allowance and still contains claims which interfere with claims of the
patent under reexamination, further action on the application should be
suspended until the certificate on the reexamination proceeding has been
issued.

MOTION TO SUSPEND INTERFERENCE UNDER 37 CFR 1.635 PENDING THE OUTCOME OF
A REEXAMINATION PROCEEDING

A motion under  37 CFR 1.635 to suspend an interference pending the
outcome of a reexamination proceeding may be made at any time during the
interference by any party thereto. The motion must be presented to the
administrative patent judge who will decide the motion based on the
particular fact situation. However, no consideration will be given such
a motion unless and until a reexamination order is issued, nor will
suspension of the interference normally be permitted until after any
motions have been disposed of. If the motion under  37 CFR 1.635 is
denied by the administrative patent judge, a request to stay the
interference may be made to the Commissioner under  37 CFR 1.565(e).

REQUEST BY THE EXAMINER FOR ACTION PURSUANT TO 37 CFR 1.641

Normally, examiners should not have to alert the administrative patent
judge for action under  37 CFR 1.641 while the reexamination proceeding
is pending.  Rather, examiners should rely on the parties of the
interference to file a notice under  37 CFR 1.660.  See also the
discussion in the next paragraph.

REQUEST FOR REEXAMINATION FILED DURING INTERFERENCE

In view of the provisions of  37 CFR 1.510(a), "Any person may, at any
time during the period of enforceability of a patent" file a request for
reexamination. Under  37 CFR 1.660, the patent owner must notify the
Board of Patent Appeals and Interferences that a request for
reexamination was filed, within 10 days of receiving notice of the
request having been filed. Such requests for reexamination will be
processed in the normal manner. No delay, or stay, of the reexamination
will occur because the requester is not a party to the interference. If
the examiner orders reexamination pursuant to  37 CFR 1.525 and
subsequently rejects a patent claim corresponding to a count in the
interference, the attention of the administrative patent judge shall be
called thereto and appropriate action may be taken under  37 CFR 1.641.

PETITION TO STAY REEXAMINATION PROCEEDING BECAUSE OF INTERFERENCE

Any petition to stay a reexamination proceeding, because of an
interference, which is filed prior to the determination (37 CFR 1.515)
and order to reexamine (37 CFR 1.525) will not be considered, but will
be returned to the party submitting the same. The decision returning
such a premature petition will be made of record in the reexamination
file, but no copy of the petition will be retained by the Office. A
petition to stay the reexamination proceeding because of the
interference may be filed by the patent owner as a part of the patent
owner's statement under  37 CFR 1.530 or subsequent thereto. If a party
to the interference, other than the patent owner, is a requester of the
reexamination, that party may petition to stay the reexamination
proceeding as a part of a reply pursuant to  37 CFR 1.535. If the other
party to the interference is not the requester, any petition by that
party is improper under  37 CFR 1.550(e) and will not be considered. Any
such improper petitions will be returned to the party submitting the
same. Premature petitions to stay the reexamination proceedings; i.e.,
those filed prior to the determination (37 CFR 1.515) and order to
reexamine (37 CFR 1.525) will be returned by the examining Group
Director as premature. Petitions to stay filed subsequent to the date of
the order for reexamination will be referred to the Office of the Deputy
Assistant Commissioner for Patent Policy and Projects for decision. All
decisions on the merits of petitions to stay a reexamination proceeding
because of an interference will be made in the Office of the Deputy
Assistant Commissioner for Patent Policy and Projects.

ACTION IN INTERFERENCE FOLLOWING REEXAMINATION

If one or more claims of a patent which is involved in an interference
are canceled or amended by the issuance of a reexamination certificate,
appropriate action will be taken by the administrative patent judge
under  37 CFR 1.641.

Upon issuance of the reexamination certificate, the patent owner must
notify the administrative patent judge thereof.

---SECTION---2285 Copending Reexamination and Reissue	Proceedings

37 CFR 1.565 Concurrent Office proceedings.

                  +++    

(d)	If a reissue application and a reexamination proceeding on which an
order pursuant to Section  1.525 has been mailed are pending
concurrently on a patent, a decision will normally be made to merge the
two proceedings or to stay one of the two proceedings. Where merger of a
reissue application and a reexamination proceeding is ordered, the
merged examination will be conducted in accordance with Section Section 
1.171-1.179 and the patent owner will be required to place and maintain
the same claims in the reissue application and the reexamination
proceeding during the pendency of the merged proceeding. The examiner's
actions and any responses by the patent owner in a merged proceeding
will apply to both the reissue application and the reexamination
proceeding and be physically entered into both files. Any reexamination
proceeding merged with a reissue application shall be terminated by the
grant of the reissued patent.

                  +++    

The general policy of the Office is that a reissue application
examination and a reexamination proceeding will not be conducted
separately at the same time as to a particular patent. The reason for
this policy is to permit timely resolution of both proceedings to the
extent possible and to prevent inconsistent, and possibly conflicting,
amendments from being introduced into the two proceedings on behalf of
the patent owner.  Accordingly, if both a reissue application and a
reexamination proceeding are pending concurrently on a patent, a
decision will normally be made (1) to merge the two proceedings or (2)
to stay one of the two proceedings. The decision as to whether the
proceedings are to be merged, or which proceeding (if any) is to be
stayed is made in the Office of the Deputy Assistant Commissioner for
Patent Policy and Projects. See   In re Onda, 229 USPQ 235 (Comm'r Pat.
1985).

TIME FOR MAKING DECISION ON MERGING OR STAYING THE PROCEEDINGS

A decision whether or not to merge the reissue application examination
and the reexamination proceeding, or to stay one of the two proceedings,
will not be made prior to the mailing of an order to reexamine the
patent pursuant to  37 CFR 1.525. Until such time as reexamination is
ordered, the examination of the reissue application will proceed. A
determination on the request must not be delayed because of the
existence of a copending reissue application, since  35 U.S.C. 304 and 
37 CFR 1.515 require a determination within 3 months following the
filing date of the request.  See MPEP Section  2241.  If the decision on
the request denies reexamination (MPEP Section  2247), the examination
of the reissue application should be continued. If reexamination is
ordered (MPEP Section  2246), the reexamination file, the reissue
application, and the patent file should be delivered to the Office of
the Deputy Assistant Commissioner for Patent Policy and Projects
promptly, following the mailing of the decision ordering reexamination.
The delivery of the files to the Office of the Deputy Assistant
Commissioner for Patent Policy and Projects should not be delayed
awaiting the filing of any statement under  37 CFR 1.530 and any reply
under  37 CFR 1.535, or the expiration of the time for same.

If a reissue application is filed during the pendency of a reexamination
proceeding, the reexamination file, the reissue application, and the
patent file should be delivered to the Office of the Deputy Assistant
Commissioner for Patent Policy and Projects as promptly as possible
after the reissue application reaches the examining group.

The decision on whether or not the proceedings are to be merged, or
which proceeding (if any) is to be stayed, will generally be made as
promptly as possible after receipt of all of the files in the Office of
the Deputy Assistant Commissioner for Patent Policy and Projects.  Until
a decision is mailed merging the proceedings or staying one of the
proceedings, the two proceedings will continue and be conducted
simultaneously, but separately.

The Office may in certain situations issue a certificate at the
termination of a reexamination proceeding, even if a copending reissue
application or another reexamination request has already been filed.

CONSIDERATIONS IN DECIDING WHETHER TO MERGE THE PROCEEDINGS OR WHETHER
TO STAY A PROCEEDING

The decision on whether to merge the proceedings or stay a proceeding
will be made on a case-by-case basis based upon the status of the
various proceedings. Due consideration will be given to the finality of
the reexamination requested.

A. Reissue About To Issue, Reexamination Requested.

If the reissue patent will issue before the determination on the
reexamination request must be made, the determination on the request
should normally be delayed until after the granting of the reissue
patent; and then the determination should be made on the basis of the
claims in the reissue patent.  The reexamination, if ordered, would then
be on the reissue patent claims rather than the original patent claims.
Since the reissue application would no longer be pending, the
reexamination would be processed in a normal manner.

Where a reissue patent has been issued, the determination on the request
for reexamination should specifically point out that the determination
has been made on the claims of the reissue patent and not on the claims
of the original patent.  If a reissue patent issues on the patent under
reexamination after reexamination is ordered the next action from the
examiner in the reexamination should point out that further proceedings
in the reexamination will be based on the claims of the reissue patent
and not on the patent surrendered. Form Paragraph 22.05 may be used in
the Office action.

22.05 Reexamination Based on Reissue Claims

In view of the surrender of original Patent No.   [1] and the granting
of Reissue Patent No.   [2] which issued on [3], all subsequent
proceedings in this reexamination will be based on the reissue patent
claims.

Where the reissue patent has issued prior to the filing of a request for
reexamination of the parent patent, see MPEP Section  2258.

B. Reissue Pending,  Reexamination Request Filed.

Where a reissue patent will not be granted prior to the expiration of
the 3-month period for making the determination, a decision will be made
as to whether the proceedings are to be merged, or which proceeding (if
any) is to be stayed, after an order to reexamine has been issued.  The
general policy of the Office is to merge the more narrow reexamination
proceeding with the broader reissue application examination whenever it
is desirable to do so in the interests of expediting the conduct of both
proceedings.  In making a decision on whether or not to merge the two
proceedings, consideration will be given to the status of the reissue
application examination at the time the order to reexamination the
patent pursuant to  37 CFR 1.525 is mailed.  For example, if examination
of the reissue application has not begun, or if a rejection of the
primary examiner has not been appealed to the Board of Patent Appeals
and Interferences pursuant to  37 CFR 1.191, it is likely that a merger
of the reissue application examination and the reexamination proceeding
will be ordered by the Office of the Deputy Assistant Commissioner for
Patent Policy and Projects. If, however, the reissue application is on
appeal to the Board of Patent Appeals and Interferences or the courts,
that fact would be considered in making a decision whether to merge the
proceedings or stay one of the proceedings. See In re Stoddard, 213 USPQ
386 (Comm'r Pat. 1982); and In re Scragg, 215 USPQ 715 (Comm'r Pat.
1982).

If such a merger of the proceedings is ordered, the order merging the
proceedings will also require that the patent owner place the same
claims in the reissue application and in the reexamination proceeding
for purposes of the merged proceedings. An amendment may be required to
be filed to do this within a specified time set in the order merging the
proceedings.

If the reissue application examination has progressed to a point where a
merger of the two proceedings is not desirable at that time, then the
reexamination proceeding will generally be stayed until the reissue
application examination is complete on the issues then pending.  After
completion of the examination on the issues then pending in the reissue
application examination, the stay of the reexamination proceeding will
be removed and the proceedings either merged or the reexamination
proceeding will be conducted separately if the reissue application has
become abandoned. The reissue application examination will be reopened,
if necessary, for merger of the reexamination proceeding therewith.

If a stay of a reexamination proceeding has been removed following a
reissue application examination, the first Office action will be given a
shortened statutory period for response of 1 month unless a longer
period for response clearly is warranted by the nature of the examiner's
action. The second Office action will normally be final and also have a
1-month period for response. These shortened periods are considered
necessary to prevent undue delay in terminating the proceedings and also
to proceed with "special dispatch" in view of the earlier stay.

If the reissue application examination and the reexamination proceeding
are merged, the issuance of the reissue patent will also serve as the
certificate under  37 CFR 1.570 and the reissue patent will so indicate.

C. Reexamination Proceedings Underway, Reissue Application Filed.

When a reissue application is filed after a reexamination proceeding has
begun following an order therefor, the reexamination, patent, and the
reissue files should be forwarded to the Office of the Deputy Assistant
Commissioner for Patent Policy and Projects for consideration as to
whether or not to merge the proceedings or stay one proceeding.

Where reexamination has already been ordered prior to the filing of a
reissue application, the following factors may be considered in deciding
whether to merge the proceedings or stay one proceeding:

(A) The status of the reexamination proceeding: For example,
consideration will be given as to whether a statement and reply have
been received, a first Office action has been mailed, a final rejection
has been given, or printing of certificate has begun;

(B) The nature and scope of the reissue application: For example,
consideration will be given as to whether the issues presented in the
proceedings are the same, overlapping, or completely separate; and
whether the reissue claims are broadened or are related to issues other
than rejections based on patents or printed publications.

CONDUCT OF MERGED REISSUE APPLICATION EXAMINATION AND REEXAMINATION
PROCEEDINGS

If a reissue application examination and a reexamination proceeding are
merged, the merged examination will be conducted on the basis of the
rules relating to the broader reissue application examination.
Amendments should be submitted in accordance with the reissue practice
under  37 CFR 1.121(b); see MPEP Section  1453.  The examiner, in
examining the merged proceeding, will apply the reissue statute, rules,
and case law to the merged proceeding. This is appropriate in view of
the fact that the statutory provisions for reissue applications and
reissue application examination include, inter alia, provisions
equivalent to  35 U.S.C. 305 relating to the conduct of reexamination
proceedings.

In any merged reissue application and reexamination proceeding, each
Office action issued by the examiner will take the form of a single
action which jointly applies to both the reissue application and the
reexamination proceeding. Each action will contain identifying data for
both the reissue application and the reexamination proceeding, and each
action will be physically entered into both files, which will be
maintained as separate files.

Any response by the applicant/patent owner in such a merged proceeding
must consist of a single response, filed in duplicate, for entry in both
files, and service of copy must be made on any third party reexamination
requester.  A copy of all Office actions will be mailed to the third
party reexamination requester but not to any other third party.

If the applicant/patent owner in such a merged proceeding fails to file
a timely and appropriate response to any Office action, the merged
proceeding will be terminated.  The reissue application will be held
abandoned. A NIRC will be issued (see MPEP Section  2287), and the
Commissioner will proceed to issue a reexamination certificate under  37
CFR 1.570 in accordance with the last action of the Office, unless
further action is clearly needed in view of the difference in rules
relating to reexamination and reissue proceedings.

If the applicant/patent owner in such a merged proceeding files an
express abandonment of the reissue application pursuant to  37 CFR
1.138, the next Office action of the examiner will accept the express
abandonment, dissolve the merged proceeding, and continue the
reexamination proceeding. Upon dissolution of the merged proceeding, any
grounds of rejection which are not applicable under reexamination should
be withdrawn (e.g., based on public use or sale) and any new grounds of
rejection which are applicable under reexamination (e.g., improper
broadened claims) should be made by the examiner. The existence of any
questions remaining which cannot be considered under reexamination
following dissolution of the merged proceeding would be noted by the
examiner as not being proper under reexamination pursuant to  37 CFR
1.552(c).

If applicant/patent owner files a continued prosecution reissue
application (a CPA) under  37 CFR 1.53(d), whereby the existing reissue
application is considered to be expressly abandoned, this will most
likely result in the dissolution of the merged proceeding, a stay of the
CPA reissue application, and separate, continued prosecution of the
reexamination proceeding.

PETITION TO MERGE REISSUE APPLICATION EXAMINATION AND REEXAMINATION
PROCEEDINGS OR TO STAY EITHER PROCEEDING BECAUSE OF THE EXISTENCE OF THE
OTHER

No petition to merge the proceedings, or stay one of them, is necessary
since the Office will generally,   sua sponte, make a decision to merge
the proceedings or stay one of them.  If any petition to merge the
proceedings, or to stay one proceeding because of the other, is filed
prior to the determination (37 CFR 1.515) and order to reexamine (37 CFR
1.525), it will not be considered, but will be returned to the party
submitting the same by the examining Group Director, regardless of
whether the petition is filed in the reexamination proceeding, the
reissue application, or both. This is necessary to prevent premature
papers relating to the reexamination proceeding from being filed.  The
decision returning such a premature petition will be made of record in
both the reexamination file and the reissue application file, but no
copy of the petition will be retained by the Office.  See MPEP Section 
2267.

The patent owner may file a petition under  37 CFR 1.182 to merge the
proceedings, or stay one proceeding because of the other, at the time
the patent owner's statement under  37 CFR 1.530 is filed or subsequent
thereto in the event the Office has not acted prior to that date to
merge the proceedings or stay one of them.  If the requester of the
reexamination is not the patent owner, that party may petition to merge
the proceedings, or stay one proceeding because of the other, as a part
of a reply pursuant to  37 CFR 1.535, in the event the Office has not
acted prior to that date to merge the proceedings or stay one of them. 
A petition to merge the proceedings, or stay one of them because of the
other, which is filed by a party other than the patent owner or the
requester of the reexamination will not be considered, but will be
returned to that party by the examining Group Director as being improper
under  37 CFR 1.550(e).

All decisions on the merits or petitions to merge the reissue
application examination and the reexamination proceeding, or to stay one
proceeding because of the other, will be made in the Office of the
Deputy Assistant Commissioner for Patent Policy and Projects.  Such
petitions to merge the proceedings, or stay one of the proceedings
because of the other, which are filed by the patent owner or the
requester subsequent to the date of the order for reexamination will be
referred to the Office of the Deputy Assistant Commissioner of Patent
Policy and Projects for decision.

FEES IN MERGED PROCEEDINGS

Where the proceedings have been merged and a paper is filed which
requires payment of a fee (e.g., petition fee, appeal fee, brief fee,
oral hearing fee), only a single fee need be paid.  For example, only
one fee need be paid for an appeal brief even though the brief relates
to merged multiple proceedings and copies must be filed for each file in
the merged proceeding.

---SECTION---2286 Reeexamination and Litigation Proceedings

37 CFR 1.565 Concurrent office proceedings.

(b) If a patent in the process of reexamination is or becomes involved
in litigation or a reissue application for the patent is filed or
pending, the Commissioner shall determine whether or not to stay the
reexamination or reissue proceeding.

The Federal Courts and the Patent and Trademark Office are jointly
responsible for the overall administration of the patent system.

35 U.S.C. 302 permits a request for reexamination to be filed "at any
time."  Thus, requests for reexamination are frequently filed where the
patent for which reexamination is requested is involved in concurrent
litigation. The guidelines set forth below will generally govern Office
handling of reexamination requests where there is concurrent litigation
in the Federal courts.

COURT SANCTIONED REEXAMINATION PROCEEDING OR LITIGATION STAYED FOR
REEXAMINATION

Any request for reexamination which indicates (1) that it is filed as a
result of an agreement by parties to litigation which agreement is
sanctioned by a court, or (2) that litigation is stayed for the filing
of a reexamination request will be taken up by the examiner for decision
6 weeks after the request was filed.  See MPEP Section  2241.  If
reexamination is ordered, the examination following the statement by the
patent owner under  37 CFR 1.530 and the reply by the requester under 
37 CFR 1.535 will be expedited to the extent possible. Office actions in
these reexamination proceedings will normally set a 1 month shortened
statutory period for response rather than the 2 months usually set in
reexamination proceedings. See MPEP Section  2263.  This 1-month period
may be extended only upon a showing of sufficient cause. See MPEP
Section  2265.  See generally Raytek, Inc. v. Solfan Systems Inc., 211
USPQ 405 (N. D. Cal., 1981); Dresser Industries, Inc. v. Ford Motor Co.,
211 USPQ 1114 (N. D., Texas, 1981);   Digital Magnetic Systems, Inc. v. 
Ansley, 213 USPQ 290 (W. D. Okla., 1982); Gould v.  Control Laser Corp.,
705 F.2d 1340, 217 USPQ 985 (Fed. Cir. 1983); The Toro Co. v. R.L.
Nelson Corp., 223 USPQ 636 (C.D. Ill. 1984); In re Vamco Machine and
Tool, Inc., 752 F.2d 1564, 224 USPQ 617 (Fed. Cir. 1985); and Laffland
Bros. Co. v. Mid-Western Energy Corp., 225 USPQ 886 (W.D. Okla. 1985).

FEDERAL COURT DECISION KNOWN TO EXAMINER AT THE TIME THE DETERMINATION
ON THE REQUEST FOR REEXAMINATION IS MADE

If a Federal Court decision on the merits of a patent is known to the
examiner at the time the determination on the request for reexamination
is made, the following guidelines will be followed by the examiner,
whether or not the person who filed the request was a party to the
litigation. When the initial question as to whether the prior art raises
a substantial new question of patentability as to a patent claim is
under consideration, the existence of a final court decision of claim
validity in view of the same or different prior art does not necessarily
mean that no new question is present, in view of the different standards
of proof employed by the district courts and the Office. Thus, while the
Office may accord deference to factual findings made by the court, the
determination of whether a substantial new question of patentability
exists will be made independently of the court's decision on validity as
it is not controlling on the Office. A non-final holding of claim
invalidity or unenforceability will not be controlling on the question
of whether a substantial new question of patentability is present. A
final holding of claim invalidity or unenforceability, however, is
controlling on the Office. In such cases, a substantial new question of
patentability would not be present as to the claims held invalid or
unenforceable. See Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed.
Cir. 1988).

Any determination on a request for reexamination which the examiner
makes after a Federal Court decision must be reviewed by the examining
Group Director to ensure that it conforms to the current Office
litigation policy and guidelines. See MPEP Section  2240.  This review
by the Group Director is a procedural review and is not a review of the
merits of the examiner's determination.  This review may be delegated by
the Group Director to the examining group Special Program Examiner.

For a discussion of the policy in specific situations where a Federal
Court decision has been issued, see MPEP Section  2242.

REEXAMINATION WITH CONCURRENT LITIGATION BUT ORDERED PRIOR TO FEDERAL
COURT DECISION

In view of the statutory mandate to make the determination on the
request within 3 months, the determination on the request based on the
record before the examiner will be made without awaiting a decision by
the Federal Court.  It is not realistic to attempt to determine what
issues will be treated by the Federal Court prior to the court decision.
Accordingly, the determination on the request will be made without
considering the issues allegedly before the court. If reexamination is
ordered, the reexamination will continue until the Office becomes aware
that a court decision has issued.  At such time, the request will be
reviewed in accordance with the guidelines set forth below. The patent
owner is required by  37 CFR 1.565(a) to call the attention of the
Office to any prior or concurrent proceeding in which the patent is
involved or was involved. Thus, the patent owner has an obligation to
promptly notify the Office that a decision has been issued in the
Federal Court.

FEDERAL COURT DECISION ISSUES AFTER REEXAMINATION ORDERED

Pursuant to  37 CFR 1.565(a), the patent owner in a reexamination
proceeding must promptly notify the Office of any Federal court decision
involving the patent.  Where the reexamination proceeding is currently
pending and the court decision issues, or the Office becomes aware of a
court decision relating to a pending reexamination proceeding, the order
to reexamine is reviewed to see if a substantial new question of
patentability is still present. If no substantial new question of
patentability is still present, the order to reexamine is vacated by the
examining Group Director and reexamination is terminated.

A non-final district court decision concerning a patent under
reexamination shall have no binding effect on a reexamination
proceeding.

The issuance of a final district court decision upholding validity
during a reexamination also will have no binding effect on the
examination of the reexamination.  This is because the Court states in
Ethicon v. Quigg, 849 F.2d 1422, 1428, 7 USPQ2d 1152, 1157 (Fed. Cir.
1988) that the Office is not bound by a court's holding of patent
validity and should continue the reexamination. The Court notes that
district courts and the Office use different standards of proof in
determining invalidity, and thus, on the same evidence, could quite
correctly come to different conclusions. Specifically, invalidity in a
district court must be shown by "clear and convincing" evidence, whereas
in the Office, it is sufficient to show nonpatentability by a
"preponderance of evidence."  Since the "clear and convincing" standard
is harder to satisfy than the "preponderance" standard, deference will
ordinarily be accorded to the factual findings of the court where the
evidence before the Office and the court is the same.  If sufficient
reasons are present, claims held valid by the court may be rejected in
reexamination.

On the other hand, the Court states that a final holding of invalidity
is binding on the Office and the reexamination may be discontinued. 
Upon the issuance of a holding of claim invalidity or unenforceability
by a district court, reexamination of the claims held to be invalid or
unenforceable will continue in the Office until the court's decision
becomes final.  Upon the issuance of a   final holding of invalidity or
unenforceability, the claims held invalid or unenforceable will be
withdrawn from consideration in the reexamination.  The reexamination
will continue as to any remaining claims.  If all of the claims are  
finally held invalid or unenforceable, the reexamination will be vacated
by the Group Director as no longer containing a substantial new question
of patentability, and reexamination will be terminated.

LITIGATION REVIEW AND GROUP DIRECTOR APPROVAL

In order to ensure that the Office is aware of prior or concurrent
litigation, the examiner is responsible for conducting a reasonable
investigation for evidence as to whether the patent for which
reexamination is requested has been or is involved in litigation. The
investigation will include a review of the reexamination file, the
patent file, and the results of the litigation computer search by the
STIC.

If the examiner discovers, at any time during the reexamination
proceeding, that there is litigation or that there has been a Federal
court decision on the patent, the fact will be brought to the attention
of the Group Director prior to any further action by the examiner. The
Group Director must review any action taken by the examiner in such
circumstances to ensure current Office litigation policy is being
followed. This review is a procedural review and is not a review of the
merits of the decision.  This review may be delegated by the Group
Director to the examining group Special Program Examiner.

FEDERAL COURT DECISION CONTROLLING IN REEXAMINATION PROCEEDING

Once a Federal court has ruled upon the merits of a patent and
reexamination is still appropriate under the guidelines set forth above,
the Federal court decision will be considered controlling and will be
followed as to claims finally held to be invalid by the court.

---SECTION---2287 Conclusion of Reexamination Proceeding

Upon conclusion of the reexamination proceeding, the examiner must
prepare a "Notice of Intent to Issue Reexamination Certificate" (NIRC)
by completing form PTOL-469.  Where 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.  The examiner must prepare the reexamination file
so that the Office of Publications can prepare and issue a certificate
in accordance with  37 CFR 1.570 and  35 U.S.C. 307 setting forth the
results of the reexamination proceeding and the content of the patent
following the proceeding.  See MPEP Section  2288.

A NIRC informs the patent owner and any third party requester that the
reexamination proceeding has been terminated. The rules do not provide
for an amendment to be filed in a reexamination proceeding after
prosecution has been terminated. 37 CFR 1.312 does 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 considered.

Normally the title will not need to be changed during reexamination. If
a change of the title is necessary, patent owner should be notified of
the need to provide an amendment changing the title 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, a
change to the title of the invention by the examiner may only be done by
way of an examiner's amendment. Changing the title and merely initialing
the change is not permitted in reexamination.

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.

In preparing the reexamination file for publication of the certificate,
the examiner must review the reexamination and patent files to be sure
that all the appropriate parts are completed. The review should include
completion of the following items:

(A) the "Reexamination Field of Search" and the "Search Notes" -  to be
sure the file wrapper is filled in with the classes and subclasses that
were actually searched and other areas consulted;

(B) the "Claim No. For O.G." box -  to be sure that a representative
claim which has been reexamined is indicated for publication in the
Official Gazette;

(C) the "Drawing Fig. For Certificate and For O.G." box -  to be sure
that an appropriate drawing figure is indicated for printing on the
certificate cover sheet and in the Official Gazette;

(D) the "Litigation Review" box -  to be sure that the Office is aware
of prior or concurrent litigation;

(E) the face of the file -  to be sure that the necessary data is
included thereon; and

(F) the "Index of Claims" box  -  to be sure the status of each claim is
indicated and the final claim numbers are indicated.

The claims or claims 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) Write the claim number clearly in black ink;

(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 application claim number.

The examiner must in all cases fill out a blue issue slip form PTO-270
or design issue slip form PTO-328 and include the current international
classification and U.S. classification for both the original
classification and all cross-references. An issue slip is required, even
if all of the claims are canceled. Where the face of the reexamination
file wrapper is provided with the issuing classification boxes, the
examiner should fill in the issuing classification boxes with the U.S.
and international classifications rather than using the issue slip. 

If any new cross-references are added, the examiner must order a copy of
the patent by using form PTO-14B and place the copy in the search file
so that the certificate may be attached thereto when it issues.

If the patent owner desires the names of the attorneys or agents 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.

If a proper paper has been submitted by the patent owner indicating the
names of the attorneys or agents to be published on the certificate,
that paper should be physically placed on top of the other papers in the
center of the reexamination file at the conclusion of the proceedings.

The examiner must also complete a checklist, form PTO-1516, for the
reexamination file which will be forwarded to the Office of Publications
identifying:

(A) Any amendments to the abstract and description;

(B) Any amendments to the drawings;

(C) Any terminal disclaimer or dedication filed during reexamination;

(D) Any certificate(s) of correction to the patent;

(E) The patentability of claim(s)____ (and) ____ is confirmed;

(F) Claim(s) _____ (and) ____ was (were) previously canceled. (Relates
to a prior proceeding);

(G) Claim(s) _____ (and) ____ was (were) previously disclaimed;

(H) Claim(s) _____ (and) ____ is (are) now disclaimed;

(I) Claim(s) _____ (and) ____, having been finally determined to be
unpatentable, is (are) canceled;

(J) Claim(s) _____ (and) ____ is (are) determined to be patentable as
amended. (Note: these claim(s) to be printed on certificate.);

(K) Claim(s) _____ (and) ____, dependent on an amended claim, is (are)
determined to be patentable. (Note: to be used for claims which are not
amended.  Amended claims must be listed in j above);

(L) New claim(s) _____ (and) ____ is (are) added and determined to be
patentable. (Note: these claim(s) to be printed on certificate.);

(M) Claim(s) _____ (and) ____ was (were) not reexamined;

(N) Other (identify claims and status) _________ ; and

(O) Any decision of the Patent and Trademark Office, Federal court or
other forum which may affect the validity of the patent but which have
not been considered during reexamination.

A clean copy of the patent being reexamined should also be provided to
be forwarded out of group with the file. The examiner should inspect the
title report in the file (usually paper two or three). If the title
report 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 certificate under 
37 CFR 3.73(b) indicating that title is in the assignee (i.e., it has
not reverted back to the inventors). See MPEP Section  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 turned into the reexamination clerk.  The
reexamination clerk will complete the Reexamination Clerk Checklist form
PTO-1517. The reexamination clerk 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; or

(G) the requester's address have been properly entered on the face of
the reexamination and patent files and properly entered in the PALM data
base. After the clerk has finished his/her processing, he/she will
forward the reexamination file, the patent file, the clean copy of the
patent, the Examiner Checklist-Reexamination PTO-1516, and the
Reexamination Clerk Checklist PTO-1517 to the examining group Special
Program Examiner for review.  After approval by the examining group
Special Program Examiner, the reexamination clerk will mail the NIRC
with attachments and forward the reexamination file with the patent file
to the Special Program Law Office (see MPEP Section  2289), which will
ultimately forward same to the Office of Publications for printing.

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. 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.

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 state one of the two
following examples, as is appropriate:

"Claims 1-5 and 6-8 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 Section  2266."

   "The rejection of claims 1-5 and 6-8 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 reached by telephone and indicated that there
was no timely filing (as discussed above), the attachment to the NIRC
will make the telephone interview of record.

In order to cancel the live claims, brackets should be placed around all
the live claims. All other claims in the proceeding should have
previously been either replaced or canceled.

The examiner will designate a cancelled original patent claim, to be
printed in the Official Gazette, on the file wrapper in the appropriate
place for the claim chosen.

REEXAMINATION REMINDERS

The following items deserve special attention. The examiner should
ensure they have been correctly completed or followed before passing the
case for issue.

(A) All patent claims must be examined. See MPEP Section  2243.

(B) No renumbering of patent claims is permitted.  New claims may
require renumbering. See MPEP Section  2250.

(C) All amendments to the description and claims must conform to
requirements of  37 CFR 1.530(d). 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 Section  2250.

(D) The prior art must be listed on a PTO-892 or PTO-1449 form. These
forms must be properly completed.  See MPEP Section  2257.

(E) The examiner and 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 clerk should personally review the
file before completing an item. The clerk should check to make certain
that the responses to all related items on both checklists are in
agreement.

(F) Multiple pending reexamination proceedings must be merged.  See MPEP
Section  2283.

(G) Reasons for patentability and/or confirmation are required for each
claim found patentable.  See below.

(H) There is no issue fee in reexamination. See MPEP Section  2233.

(I) The patent claims may not be amended nor new claims added after
expiration of the patent. See MPEP Section  2250.

(J) Original drawings cannot be physically changed.  All drawing
amendments must be presented on new sheets. The new sheets must be
approved by the Office Draftsman before the case is forwarded from the
examining group to the Special Program Law Office. See MPEP Section 
2250.01.

(K) An amended or new claim may not enlarge the scope of the patent
claims.  See MPEP Section  2250.

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 a formal 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) in amending the patent.  See MPEP
Section  2250.

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

22.06 Examiner's Amendment Accompanying Notice of Intent To Issue
Reexamination Certificate

An examiner's amendment to the record appears below.  The changes made
by this examiner's amendment will be reflected in the reexamination
certificate to issue in due course.

[1]

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 Section 
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 are set forth on form PTOL-476, entitled
"REASONS FOR PATENTABILITY AND/OR CONFIRMATION."  It is noted that
original patent claims found patentable are designated as "confirmed"
claims, while new claims and amended patent claims are designated as
"patentable" claims.  However, for purposes of the examiner setting
forth reasons, 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.

As an alternative to form PTOL-476, the examiner may use form paragraph
22.16.

22.16 Reasons For Patentability and/or Confirmation

STATEMENT OF REASONS FOR PATENTABILITY AND/OR CONFIRMATION

The following is an examiner's statement of reasons for patentability
and/or confirmation of the claims found patentable in this reexamination
proceeding: [1]

Any comments considered necessary by PATENT OWNER regarding the above
statement must be submitted promptly to avoid processing delays.  Such
submission by the patent owner should be labeled: "Comments on Statement
of Reasons for Patentability and/or Confirmation" and will be placed in
the reexamination file.

Examiner Note:

This form paragraph may be used as an attachment to the Notice of Intent
to Issue Reexamination Certificate, PTOL-469 (item number 2).

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

---SECTION---2288 Issuance of Reexamination Certificate

35 U.S.C. 307 Certificate of patentability, unpatentability, and claim
cancellation.

(a)	In a reexamination proceeding under this chapter, when the time for
appeal has expired or any appeal proceeding has terminated, the
Commissioner will issue and publish a certificate canceling any claim of
the patent finally determined to be unpatentable, confirming any claim
of the patent determined to be patentable, and incorporating in the
patent any proposed amended or new claim determined to be patentable.

                  +++    

37 CFR 1.570 Issuance of reexamination certificate after reexamination
proceedings.

(a) Upon the conclusion of reexamination proceedings, the Commissioner
will issue a certificate in accordance with  35 U.S.C. 307 setting forth
the results of the reexamination proceeding and the content of the
patent following the reexamination proceeding.

(b) A certificate will be issued in each patent in which a reexamination
proceeding has been ordered under Section  1.525. Any statutory
disclaimer filed by the patent owner will be made part of the
certificate.

(c) The certificate will be mailed on the day of its date to the patent
owner at the address as provided for in Section  1.33(c). A copy of the
certificate will also be mailed to the requester of the reexamination
proceeding.

(d) If a certificate has been issued which cancels all of the claims of
the patent, no further Office proceedings will be conducted with regard
to that patent or any reissue applications or reexamination requests
relating thereto.

(e) If the reexamination proceeding is terminated by the grant of a
reissued patent as provided in Section  1.565(d), the reissued patent
will constitute the reexamination certificate required by this section
and  35 U.S.C. 307.

(f) A notice of the issuance of each certificate under this section will
be published in the Official Gazette on its date of issuance.

Since abandonment is not possible in a reexamination proceeding, a
reexamination certificate will be issued at the conclusion of the
proceeding in each patent in which a reexamination proceeding has been
ordered under  37 CFR 1.525 except where the reexamination has been
terminated by the grant of a reissue patent on the same patent.

Where the reexamination is terminated for a failure to timely respond to
an Office action, see MPEP Section  2266.

The reexamination certificate will set forth the results of the
proceeding and the content of the patent following the reexamination
proceeding. The certificate will:

(A) cancel any claims determined to be unpatentable;

(B) confirm any patent claims determined to be patentable;

(C) incorporate into the patent any amended or new claims determined to
be patentable;

(D) make any changes in the description approved during reexamination;

(E) include any statutory disclaimer filed by the patent owner;

(F) refer to unamended claims held invalid on final holding by another
forum on grounds not based on patents or printed publications;

(G) refer to any patent claims not reexamined;

(H) be mailed on the day of its date to the patent owner at address
provided for in 37 CFR 1.33(c)  and a copy to the requester; and

(I) refer to patent claims, dependent on amended claims, determined to
be patentable.

If a certificate issues which cancels all of the claims of the patent,
no further Office proceedings will be conducted with regard to that
patent or any reissue application or reexamination request directed
thereto.  See  37 CFR 1.570(d).

If a reexamination proceeding is terminated by the grant of a reissued
patent as provided for in  37 CFR 1.565(b), the reissued patent will
constitute the reexamination certificate required by  35 U.S.C. 307 and
this section.  See  37 CFR 1.570(e).

A notice of the issuance of each reexamination certificate will be
published in the Official Gazette on its date of issuance in a format
similar to that used for reissue patents.  See  37 CFR 1.570(f) and MPEP
Section  2291.

---SECTION---2289 Reexamination Review

All reexamination cases are monitored and reviewed in the examining
groups by the Office of the Special Program Examiner (includes SPRE,
paralegal or other technical support who might be assigned as backup) at
several stages during the prosecution.  In order to ensure that SPREs
are aware of the reexamination cases in their groups, a pair of
terminal-specific PALM flags have been created which must be set by the
SPRE before certain PALM transactions can be completed.  First, when a
new reexamination request enters the examining group, a PALM flag must
be set at a SPRE PALM terminal before a docketing transaction will be
accepted.  By having to set this first flag, the SPRE is made aware of
the assignment of the reexamination case to the group and can take
steps, as may be appropriate, to instruct the examiner on
reexamination-specific procedures before the determination process
begins, as well as throughout the period that the examiner is handling
the proceeding.  Further, a second PALM flag must be set at a SPRE PALM
terminal before the reexamination file can be given a reexamination
terminated status and sent to the Office of Publications, thereby
ensuring that the SPRE is informed when the reexamination case is being
processed for Notice of Intent to Issue Reexamination Certificate (NIRC)
so the SPRE may be able to conduct a final review of the file, if
appropriate.

After leaving the examining groups, all reexamination cases go through a
screening process currently performed in the Special Program Law Office
for obvious errors and proper preparation in order to issue a
reexamination certificate.  A patentability review is made in a sample
of reexamination cases by the Office of Quality Review.  The screening
process and the patentability review are appropriate vehicles for
correcting errors, identifying problem areas and recognizing trends,
providing information on the uniformity of practice, and providing
feedback to the examining groups.

---SECTION---2290 Format of Certificate

The reexamination certificate is formatted much the same as the title
page of current U.S. patents. The certificate is titled "Reexamination
Certificate" and includes the patent number of the original patent
preceded by the letter "B" and the number of the reexamination
proceeding of that patent. For example, "1" is provided in the
certificate for the first reexamination certificate and "2" for the
second reexamination certificate. The letter designation "B"
distinguishes the certificate as being a reexamination certificate.
Thus, a second reexamination certificate for the same patent would be
designated as "B2" followed by the patent number.

The certificate denotes the date the certificate was issued at INID code
[45] (see MPEP Section  901.04).  The title, name of inventor,
international and U.S. classification, the abstract, and the list of
prior art documents appear at their respective INID code designations,
much the same as is presently done in utility patents.

The primary differences, other than as indicated above, are:

(A) the filing date and number of the request is preceded by 
"Reexamination Request;"

(B) the patent for which the certification is now issued is identified
under the heading "Reexamination Certificate for"; and

(C) the prior art documents cited at INID code [56] will be only those
which are part of the reexamination file and cited on forms PTO-1449
(and have not been crossed out because they were not considered) and
PTO-892.

Finally, the certificate will specify the claims which were confirmed as
patentable and the claims which were canceled. Any new claims will be
printed in the certificate completely in italics, and any amended claims
will be printed in the certificate with italics and bracketing
indicating the amendments thereto. Any prior court decisions will be
identified, as well as the citation of the court decisions.

---SECTION---2291 Notice of Certificate Issuance in Official Gazette

The Official Gazette notice will include bibliographic information, and
an indication of the status of each claim after the termination of the
reexamination proceeding. Additionally, a representative claim will be
published along with an indication of any changes to the specification
or drawing.

---SECTION---2292 Distribution of Certificate

A copy of the reexamination certificate should be stapled to each copy
of the patent in the search files. A copy of the certificate will also
be made a part of any patent copies prepared by the Office subsequent to
the issuance of the certificate.

A copy of the certificate will also be forwarded to all depository
libraries and to those foreign offices which have an exchange agreement
with the U.S. Patent and Trademark Office.

---SECTION---2293 Intervening Rights

35 U.S.C. 307 Certificate of patentability, unpatentability, and claim
cancellation.

                  +++    

(b)	Any proposed amended or new claim determined to be patentable and
incorporated into a patent following a reexamination proceeding will
have the same effect as that specified in section 252 of this title for
reissued patents on the right of any person who made, purchased, or used
within the United States, or imported into the United States, anything
patented by such proposed amended or new claim, or who made substantial
preparation for the same, prior to issuance of a certificate under the
provisions of subsection (a) of this section.

The situation of intervening rights resulting from reexamination
proceedings parallels the intervening rights situation resulting from
reissue proceedings, and the rights detailed in  35 U.S.C. 252 apply
equally in reexamination and reissue situations. See Kaufman v. 
Lantech, 807 F.2d 1970, 1 USPQ2d 1202, 1206 (Fed. Cir. 1986); Fortal
Corp. v. Phone-Mate, 825 F.2d 1577, 3 USPQ2d 1771 (Fed. Cir. 1987);
Tennant v.  Hako Minuteman, 4 USPQ2d 1167 (N.D. Ill. 1987); and Key Mfg.
v.  Microdot, 4 USPQ2d (E.D. Mich. 1987).

---SECTION---2294 Terminated Reexamination Files

Terminated reexamination files in which reexamination has been denied
should be forwarded to the Files Repository (Location Code 920) for
storage with the patent file.

The files sent to the Files Repository must have either (1) a
certificate date and number (i.e., a Reexamination Certificate has
issued), or (2) the word "Terminated" written in green ink on the face
of the file at the top between the word "Reexam" and the patent number. 
The reexamination clerk in each group should make sure that an
appropriate refund has been made before the word "Terminated" is placed
on the file, and the files sent to the Files Repository.

[GRAPHIC]

[GRAPHIC]

[GRAPHIC]

---SECTION---2295 Reexamination of a Reexamination

This section provides guidance for the processing and examination of a
reexamination request filed on a patent for which a reexamination
certificate has already issued.  This reexamination request is generally
referred to as a "Reexamination of a reexamination."

The reexamination request is to be considered based on the claims in the
patent as modified by the previously issued reexamination certificate,
and not based on the original claims of the patent.  Accordingly, when
the file for the new reexamination proceeding (reexamination of a
reexamination) is first received by the examining group, the
reexamination clerk will promptly incorporate into the reexamination
specification all of the changes to the patent made by the issued
reexamination certificate.  Such incorporation must be done prior to
forwarding the proceeding to the examiner for action.

The examiner should review the reexamination clerk's entry of the
reexamination certificate to ensure that all certificate changes are
properly entered so that (1) the reexamination will be given on an
accurate specification and claims, and (2) the appropriate version of
the patent will be printed in any future reexamination certificate that
will ultimately issue.  The examiner will issue a decision on the
reexamination request based on the patent claims (and specification)
with the certificate changes entered.

Once reexamination is ordered, the reexamination proceeding is conducted
in accordance with  35 U.S.C. 305,  37 CFR 1.550 and MPEP Section  2254
-  Section  2294.

PATENT OWNER'S SUBMISSION OF AMENDMENTS:

Any amendment to the claims (or specification) of the reexamination
proceeding must be presented as if the changes made to the patent text
via the reexamination certificate are a part of the original patent. 
Thus, all italicized text in the certificate is considered as if the
text was present without italics in the original patent.  Further, any
certificate text placed in brackets is considered as if it were never
present in the patent at all. 

For example, an amendment in a "reexamination of a reexamination" might
include italicized text of claim 1 of the reexamination certificate as
underlined (or italicized) in the copy of claim 1 submitted in the
amendment.  This would indicate that text already present in the patent
(via the reexamination certificate) is again being added.  This would be
an improper amendment, and as such, an "informal submission." 
Accordingly, the examiner would notify the patent owner that the
amendment does not comply with  37 CFR 1.530(d).  Form PTOL-475 would be
used to provide the notification of the defect in the amendment, and a
1-month time period would be set for correction of the defect.  See also
MPEP Section  2266.02.

COMPLETION OF THE CHECKLISTS:

Upon conclusion of the reexamination proceeding, the reexamination file
will be processed by the examining group so that the Office of
Publication can prepare and issue a certificate in accordance with  35
U.S.C. 307 and  37 CFR 1.570.  The certificate will set forth the
results of the reexamination proceeding and the content of the patent
following the proceeding.  See MPEP Section  2287.  The examiner will
complete a checklist, Form PTO-1516, and the reexamination clerk will
complete the reexamination clerk checklist Form PTO-1517.  In completing
the checklists, the examiner and reexamination clerk should keep in mind
that the "patent" is the original patent as modified by the
reexamination certificate.  For example, claims canceled by the prior
reexamination certificate should be listed in Item 8 - "Claim(s) _____
(and) _____ was (were) previously canceled."  Likewise, in Item 12 of
the examiner checklist - "Claim(s) ____ (and) ____ is (are) determined
to be patentable as amended."; any claims amended only by the prior
reexamination certificate (i.e., not further amended in the present
reexamination) should not be listed.

Each "reexamination of a reexamination" must be reviewed by the group
Special Program Examiner and the paralegal to ensure compliance with the
above guidelines.

---SECTION---2296 PTO Forms To Be Used

The following forms must be used in reexamination actions and processing
(these forms are not reproduced below):

(A) Order - PTOL 471

(B) General Office Action - PTOL 466

(C) Advisory Action - PTOL 467

(D) Notice re Appeal & re Defective Brief - PTOL 468

(E) NIRC - PTOL 469

(F) Reasons for Patentability - PTOL 476

(G	Transmittal of Communication to Third Party Requester - PTOL 465

(H) Interview Summary - PTOL 474

(I) Notice of Defective Paper - PTOL 475

(J) General Reexam Communication (with SSP) - PTOL 473

(K) Clerical Checklist - PTOL 1517

(L) Examiner Checklist - PTOL 1516

(M) Removal of file for copying - PTOL 470.