MPEP § 2258 — MPEP § 2258
Current through: 2022-07-01

2258-Scope of Ex Parte Reexamination 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2258 
 

 
 
 
 
 
 2258 Scope of Ex Parte Reexamination [R-10.2019]
 

 
 37 CFR 1.552 Scope of reexamination in ex parte reexamination proceedings. 

 
 (a) Claims in an ex parte reexamination proceeding
 will be examined on the basis of patents or printed publications and, with respect
 to subject matter added or deleted in the reexamination proceeding, on the basis
 of the requirements of 35 U.S.C. 112 .
 

 (b) Claims in an ex parte reexamination proceeding
 will not be permitted to enlarge the scope of the claims of the patent.
 

 (c) Issues other than those indicated in paragraphs (a) and (b) of
 this section will not be resolved in a reexamination proceeding. If such issues
 are raised by the patent owner or third party requester during a reexamination
 proceeding, the existence of such issues will be noted by the examiner in the next
 Office action, in which case the patent owner may consider the advisability of
 filing a reissue application to have such issues considered and resolved.
 

 (d) Any statement of the patent owner and any
 accompanying information submitted pursuant to §
 1.501(a)(2) which is of record in the patent being
 reexamined (which includes any reexamination files for the patent) may be used
 after a reexamination proceeding has been ordered to determine the proper meaning
 of a patent claim when applying patents or printed publications.
 

 
 

 
 37 CFR 1.625 Conclusion of supplemental examination; publication of supplemental examination
 certificate; procedure after conclusion. 

 *****

 
 (d) Any ex parte reexamination
 ordered under 35 U.S.C. 257 will be
 conducted in accordance with §§ 1.530 through
 1.570 , which govern ex parte 
 reexamination, except that:
 
 (1) The patent owner will not have the right to
 file a statement pursuant to § 1.530 , and the order
 will not set a time period within which to file such a statement;
 

 (2) Reexamination of any claim of the patent may
 be conducted on the basis of any item of information as set forth in
 § 1.605 , and is not
 limited to patents and printed publications or to subject matter that has
 been added or deleted during the reexamination proceeding, notwithstanding
 §
 1.552(a) ;
 

 (3) Issues in addition to those raised by patents
 and printed publications, and by subject matter added or deleted during a
 reexamination proceeding, may be considered and resolved, notwithstanding
 §
 1.552(c) ; and 
 

 (4) Information material to patentability will be
 defined by § 1.56(b) ,
 notwithstanding § 1.555(b) .
 

 
 

 
 

 A reexamination proceeding ordered under 35 U.S.C. 304 
 provides a complete reexamination of the patent claims on the basis of prior art patents
 and printed publications. Double patenting issues may also be considered during
 reexamination. See subsection I.D. below. 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 .
 

 In a reexamination proceeding ordered under 35 U.S.C.
 257 , however, reexamination is not limited to patents and printed
 publications. Reexamination ordered under 35 U.S.C. 257 may involve any
 information which is determined by the Office to raise a substantial new question of
 patentability in a supplemental examination proceeding. The information may include, for
 example, not only a patent or a journal article, but also a sales invoice, or a transcript
 of an audio or video recording. A reexamination proceeding ordered under 35 U.S.C.
 257 may involve issues relating to 35 U.S.C. 112 
 which are not limited to matter that has been added or deleted during reexamination. Issues
 under 35 U.S.C.
 112 in a reexamination ordered under 35 U.S.C.
 257 may also involve the original subject matter of the patent under
 reexamination, including the original specification, claims, and drawings. Reexamination
 ordered under 35 U.S.C. 257 may involve any ground of patentability, such as, for
 example, patent eligible subject matter, anticipation, public use or sale, obviousness,
 written description, enablement, indefiniteness, and double-patenting. See
 MPEP §§
 2801 and 2809.01 , subsection I.
 

 I. PRIOR ART PATENTS OR PRINTED PUBLICATIONS, AND DOUBLE PATENTING Rejections on prior art in reexamination proceedings ordered under
 35 U.S.C.
 304 may only be made on the basis of prior art patents or printed
 publications. The prior art regime under which the application for the patent was
 examined (the first-inventor-to-file prior art regime, or the first-to-invent prior art
 regime) will generally be applied in reexamination of the patent. One exception would be
 where an amended or new claim having an effective filing date for the new claim on or
 after March 16, 2013, is presented during the reexamination of a patent that was subject
 to the first-to-invent prior art regime, in which case the reexamination would be
 conducted under the first-inventor-to-file prior art regime. Similarly if a benefit
 claim to a prior application with a filing date before March 16, 2013 is made during the
 reexamination , then reexamination would be conducted under the first-to-invent prior
 art regime even if the application that matured into the patent was examined under the
 first-inventor-to-file prior art regime when the following conditions are met.
 Specifically, the written description of the prior application must provide adequate
 written support under 35 U.S.C. 112 for the following: (1)
 all of the patent claims; (2) all claims presented at any time during the prosecution of
 the application that matured into the patent under reexamination; and (3) all claims
 presented at any time during the prosecution of any application to which the benefit was
 sought by the application that matured into the patent under reexamination. 
 

 With respect to the first-inventor-to-file prior art
 regime, prior art rejections may be based upon the provisions of 35 U.S.C.
 102 as it is in effect on and after March 16, 2013, applicable to
 prior art patents and printed publications. Thus “A person shall be entitled to a patent
 unless”:
 

 
 (1) “the claimed invention was patented” or “described
 in a printed publication” “before the effective filing date of the claimed
 invention”; or
 

 (2) “the claimed invention was described in a patent
 issued under section 151 , or in an application for patent published or
 deemed published under section 122(b) , in which the
 patent or application, as the case may be, names another inventor and was effectively
 filed before the effective filing date of the claimed invention.”
 

 
 These provisions are subject to the exceptions of
 35 U.S.C.
 102(b) , and effective filing dates are determined pursuant to
 35 U.S.C.
 102(d) . For further information as to the first-inventor-to-file
 prior art regime, see MPEP
 Chapter 700 .
 

 With respect to the first-to-invent prior art regime,
 prior art rejections may be based upon the following portions of prior 35 U.S.C. 102 (in
 effect prior to March 16, 2013):
 

 
 “(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 — (1) an application for
 patent, published under section 122(b) , by another
 filed in the United States before the invention by the applicant for patent or
 (2) a patent granted on an application for patent by another filed in the
 United States before the invention by the applicant for patent, except that an
 international application filed under the treaty defined in section
 351(a) shall have the effects for the purposes of this
 subsection of an application filed in the United States only if the
 international application designated the United States and was published under
 Article
 21(2) of such treaty in the English language; or” 
 

 
 *****

 “(g)... (2) before such person’s invention thereof, the invention
 was made in this country by another inventor who had not abandoned, suppressed, or
 concealed it. In determining priority of invention under this subsection, there shall
 be considered not only the respective dates of conception and reduction to practice
 of the invention, but also the reasonable diligence of one who was first to conceive
 and last to reduce to practice, from a time prior to conception by the other.”
 

 
 All citations to 35 U.S.C. discussing the first-to-invent
 prior art regime are to the relevant statute in effect on March 15, 2013. 
 

 Typically, substantial new questions of patentability and rejections in
 a reexamination proceeding are based on “prior art” patents and publications. However,
 there are exceptions, even for reexaminations ordered under 35 U.S.C. 304 . For
 example, in In re Lonardo, 119 F.3d 960, 43 USPQ2d 1262 (Fed. Cir.
 1997), the Federal Circuit upheld a nonstatutory double patenting rejection in which the
 patent upon which the rejection was based and the patent under reexamination shared the
 same effective filing date. See also the discussion as to double patenting in subsection
 I.D. below. Analogously, for reexamination proceedings examined under the
 first-to-invent prior art regime, a 35 U.S.C. 102(g)(2) rejection may be
 asserted in a reexamination proceeding based on the examples illustrated below:
 

 
 A. Previously Considered Prior Art Patents or Printed Publications After reexamination is ordered based on a proper substantial new
 question of patentability, the propriety of making a ground of rejection based on
 prior art previously considered by the Office (in an earlier examination of the
 patent) is governed by the guidance set forth in MPEP § 2258.01 .
 See also In re Hiniker Co., 150 F.3d 1362, 1367, 47 USPQ2d
 1523,1527 (Fed. Cir. 1998)(court held the reexamination proceeding was supported by a
 substantial new question of patentability where the rejection before the court was
 based on a combination of art that had been before the examiner during the original
 prosecution, and art newly cited during the reexamination proceeding.)
 

 B. Matters Other Than Patents or Printed Publications in Reexaminations
 Ordered under 35 U.S.C. 304 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 , conduct issues, etc. In this regard, see In re
 Lanham, 1 USPQ2d 1877 (Comm’r Pat. 1986), and Stewart Systems
 v. Comm’r of Patents and Trademarks, 1 USPQ2d 1879 (E.D. Va. 1986). A
 rejection on prior public use or sale, insufficiency of disclosure (with respect to
 original subject matter), etc., cannot be made even if it relies on a prior art
 patent or printed publication. Prior art 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 Langenhoven, 458 F.2d 132, 173 USPQ 426 (CCPA 1972).
 See MPEP
 § 211 . See also In re NTP, Inc., 654
 F.3d 1268, 99 USPQ2d 1500 (Fed. Cir. 2011) (holding that the Office is not prohibited
 from performing a 35 U.S.C. 112 written description
 priority analysis during reexamination).
 

 D. Double Patenting Double patenting is normally proper for consideration in
 reexamination under 35 U.S.C. 302 . 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 refers to 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, over prior art patents or non-prior art patents, is
 appropriate for consideration in reexamination under 35 U.S.C. 302 ,
 both as a basis for ordering reexamination under 35 U.S.C. 304 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. 
 

 Reexamination cannot be used to retroactively recover
 the safe harbor protection of 35 U.S.C. 121 by deleting, during
 a reexamination proceeding, subject matter from the patent that was not present in
 the parent application and amending the benefit designation to the parent application
 from a continuation-in-part (CIP) to a divisional. In re Janssen Biotech,
 Inc., 880 F.3d 1315, 125 USPQ2d 1525 (Fed. Cir. 2018). 
 

 Reexaminations ordered under 35 U.S.C.
 257 may also involve double patenting grounds. 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”).
 

 See MPEP § 804 to § 804.03 for discussion on double
 patenting. 
 

 E. Affidavits or Declarations or Other Written Evidence Affidavits or declarations or other written evidence which explain
 the contents or pertinent dates of prior art patents or printed publications in more
 detail may be considered in reexamination.
 

 In reexaminations ordered under 35 U.S.C. 304 ,
 any rejection must be based upon the prior art patents or printed publications as
 explained by the affidavits or declarations or other written evidence. The rejection
 in such circumstances cannot be based on the affidavits or declarations or other
 written evidence as such, but must be based on the prior art patents or printed
 publications.
 

 F. Admissions; Use of Admissions in Reexaminations Filed under 35 U.S.C.
 302 and Ordered under 35 U.S.C. 304 
 

 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. While such an
 admission may be utilized in combination with a patent or printed publication, a
 written statement of the patent owner submitted pursuant to 37 CFR 1.501 
 and accompanying 37 CFR 1.510(b)(2) explanation (of how each patent owner
 claim scope statement is being used to determine the proper meaning of patent
 claim) cannot be considered in making the initial reexamination determination and
 issuance of the order granting or denying reexamination. See 35 U.S.C.
 301(d) .
 

 2. Reexamination Ordered under 35 U.S.C. 304, Examination on the Merits After reexamination has been ordered under 35 U.S.C.
 304 , 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).
 

 35
 U.S.C. 301(a)(2) permits a submission under
 35
 U.S.C. 301 to contain written “statements of the patent
 owner filed in a proceeding before a federal court or the Office in which the
 patent owner took a position on the scope of any claim of a particular patent.”
 This provision of the statute has been implemented via 37 CFR
 1.501(a)(2) . If any statement of the patent owner submitted
 pursuant to 37 CFR 1.501(a)(2) is relied
 upon in the request, requester must explain how that statement is being used to
 determine the proper meaning of a patent claim in connection with prior art
 applied to that claim. 37 CFR 1.510(b)(2) requires
 that the “detailed explanation” of applying prior art provided in the request for
 ex parte reexamination must explain how each patent owner
 claim scope statement is being used to determine the proper meaning of each patent
 claim in connection with the prior art applied to that claim. The explanation will
 be considered by the Office during the examination stage, if reexamination is
 ordered, to determine the proper meaning of a patent claim in connection with
 prior art applied to that claim. 
 

 Further, admissions by the patent owner in the record as to
 matters affecting patentability may be utilized during a reexamination proceeding
 under 35 U.S.C.
 302 in combination with a patent or printed publication with
 respect to the determination of anticipation and obviousness; 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 or IFW file history 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 upheld the use of an admission in a reexamination
 proceeding under 35 U.S.C. 302 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. & Inter.
 1988), the Board held that any unequivocal 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 (e.g., on sale, public use) established in the
 record or in court may be used by the examiner in combination with patents or
 printed publications in a reexamination proceeding under 35 U.S.C.
 302 . 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.
 

 Reexaminations ordered under 35 U.S.C.
 257 may involve an admission by the patent owner, and the
 admission need not be combined with patents or printed publications.
 

 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 in reexaminations ordered
 under 35 U.S.C.
 304 . See MPEP § 2217 . Where there is related
 litigation and a federal court has made a judicial interpretation of a disputed claim
 term, the examiner in treating the disputed claim term should set forth the reasoning
 by, for example, acknowledging the judicial interpretation and assessing whether the
 judicial interpretation is consistent with the broadest reasonable construction of
 the term. Moreover, if adopting a different claim construction than the judicial
 interpretation, the examiner should supply reasoning to support the different
 interpretation.
 

 35 U.S.C.
 301(a)(2) permits a submission under 35 U.S.C.
 301 to contain written “statements of the patent owner filed in
 a proceeding before a federal court or the Office in which the patent owner took a
 position on the scope of any claim of a particular patent.” This provision of the
 statute has been implemented via 37 CFR 1.501(a)(2) . Pursuant to
 37 CFR
 1.552 , any written statement of the patent owner and any
 accompanying information submitted pursuant to 37 CFR
 1.501(a)(2) which is of record in the patent being reexamined
 (which includes any reexamination files for the patent) should be considered (after a
 reexamination proceeding has been ordered, but not at the order stage) to determine
 the proper meaning of a patent claim when applying patents or printed
 publications.
 

 During reexamination ordered under 35 U.S.C. 304 ,
 and also during reexamination ordered under 35 U.S.C.
 257 , 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,
 claim construction pursuant to the principle set forth by the court in
 Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321,
 1329 (Fed. Cir. 2005) (words of a claim “are generally given their ordinary and
 customary meaning” as understood by a person of ordinary skill in the art in question
 at the time of the invention) should be applied since the expired claim are not
 subject to amendment. See Ex parte Papst-Motoren, 1 USPQ2d 1655
 (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 In reexaminations ordered under 35 U.S.C. 304 , 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
 (e.g., 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. If a limitation
 that appears in an existing patent claim also appears in a claim newly presented in a
 reexamination proceeding, that limitation cannot be examined as to 35 U.S.C. 112 . If
 a dependent claim is rewritten as an independent claim in a reexamination proceeding,
 that independent claim cannot be examined as to 35 U.S.C. 112 , unless the nature of
 the rewriting raises a new question (e.g., by newly providing a lack of claim antecedent
 for a term in the claim). However, a specific determination regarding whether the
 claimed invention (including original patent claims) is entitled to a particular
 priority or benefit date is permitted. See In re NTP, Inc., 654 F.3d
 1268, 99 USPQ2d 1500 (Fed. Cir. 2011)(holding that the USPTO is not prohibited from
 performing a 35
 U.S.C. 112 written description priority analysis during
 reexamination).
 

 In contrast, reexaminations ordered under
 35 U.S.C.
 257 may involve any issues under 35 U.S.C. 112 .
 Such issues are not limited to matter that has been added or deleted during
 reexamination. Issues under 35 U.S.C. 112 may also include the
 original subject matter of the patent under reexamination, including the original
 specification, claims, and drawings.
 

 A. 35 U.S.C. 112 Issues To Be Considered in Reexaminations Ordered under 35
 U.S.C. 304 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
 § 2163 - § 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
 § 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 states that “no proposed amended or new claim enlarging the
 scope of a claim of the patent will be permitted in a reexamination proceeding....”
 

 A. Criteria for Enlargement of the Scope of the Claims 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. See MPEP § 1412.03 for guidance as to
 when the presented claim is considered to be a broadening claim as compared with the
 claims of the patent, i.e., what is broadening and what is not. If a claim
 is considered to be a broadening claim for purposes of reissue, it is likewise
 considered to be a broadening claim in reexamination.
 

 B. Amendment of the Specification Where the specification is amended in a reexamination proceeding,
 the examiner should make certain that the amendment to the specification 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 in a reexamination proceeding which enlarges the scope of
 the claims of the patent should be rejected under 35 U.S.C. 305 . 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 - Ex
 Parte Reexamination
 

 Claim [1] rejected under 35 U.S.C. 305 as enlarging the scope of
 the claim(s) of the patent being reexamined. In 35 U.S.C. 305 , 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 each and every claim of the patent. A claim is
 broader in scope than the original claims if it contains within its scope any conceivable
 product 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 § 2258 .
 

 
 IV. OTHER MATTERS 
 

 A. Patent Under Reexamination Subject of a Prior Office or Court
 Decision Where some of the patent claims in a patent being reexamined have
 been the subject of a prior Office or court decision, see MPEP § 2242 . Where
 other proceedings involving the patent are copending with the reexamination
 proceeding, see MPEP §
 2282 - § 2286 .
 

 Patent claims not subject to reexamination because the claims were
 held invalid by a court should be identified. See MPEP § 2242 . For
 handling a claim under reexamination which is dependent on a claim not subject to
 reexamination, see MPEP § 2260.01 . All added claims will be examined.
 

 For reexaminations ordered under 35 U.S.C. 304 , where grounds are
 set forth in a prior Office decision or federal court decision, which are not based
 on patents or printed publications and which clearly raise questions as to the
 validity of 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 that were stated in the prior decision. See 37 CFR
 1.552(c) . See In re Knight, 217 USPQ 294
 (Comm’r Pat. 1982). 
 

 B. “Live” Claims That Are Reexamined During Reexamination The Office’s determination in both the order for reexamination and
 the examination stage of the reexamination will generally be limited solely to a
 review of the “live” claims (i.e., existing claims not held invalid by a final
 decision, after all appeals) for which reexamination has been
 requested . If the requester was interested in having all of the claims
 reexamined, requester had the opportunity to include them in its request for
 reexamination. However, if the requester chose not to do so, those claim(s) for which
 reexamination was not requested under 35 U.S.C. 302 will generally not
 be reexamined by the Office. It is further noted that 35 U.S.C. 302 
 requires that “[t]he request must set forth the pertinency and manner of applying
 cited prior art to every claim for which reexamination is requested.” If requester
 fails to apply the art to certain claims, requester is not statutorily entitled to
 reexamination of such claims. If a request fails to set forth the pertinency and
 manner of applying the cited art to any claim for which reexamination is requested as
 required by 37 CFR
 1.510(b) , that claim will generally not be reexamined. 
 

 The decision to reexamine any claim for which reexamination has not
 been requested under 35 U.S.C. 302 lies within the
 sole discretion of the Office, to be exercised based on the individual facts and
 situation of each individual case. If the Office chooses to reexamine any claim for
 which reexamination has not been requested under 35 U.S.C. 302 , it is permitted to
 do so. In addition, the Office may always initiate a reexamination on its own
 initiative of the non-requested claim ( 35 U.S.C. 303(a) ).
 

 Similarly, if prior art patents or printed publications are
 discovered during reexamination which raise a substantial new question of
 patentability as to one or more patent claims for which reexamination has not been
 ordered under 35
 U.S.C. 304 (while reexamination has been ordered under
 35 U.S.C.
 304 for other claims in the patent), then such claims may be
 added, within the sole discretion of the Office, during the examination phase of the
 proceeding.
 

 C. Restriction Not Proper in Reexamination Restriction requirements cannot be made in a reexamination
 proceeding since no statutory basis exists for restriction in a reexamination
 proceeding. Note also that the addition of claims to a “separate and distinct”
 invention to the patent would be considered as being an enlargement of the scope of
 the patent claims. See Ex parte Wikdahl, 10 USPQ2d 1546 (Bd. Pat.
 App. & Inter. 1989). See MPEP § 1412.03 .
 

 D. Ancillary Matters 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.
 

 E. Claiming Foreign Priority and Domestic Benefit in
 Reexamination See MPEP §
 2258.02 for guidance on claiming foreign priority or
 domestic benefit in a reexamination proceeding.
 

 F. Correction of Inventorship Correction of inventorship may also be made during reexamination.
 See 37 CFR
 1.324 and MPEP § 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). 
 

 G. Affidavits in Reexamination Affidavits under 37 CFR 1.131(a) and
 1.132 may be utilized in a reexamination proceeding. Note,
 however, that an affidavit under 37 CFR 1.131(a) may not be used
 to “swear behind” 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 via an affidavit under
 37 CFR
 1.131(c) (see MPEP § 718 ) or in an interference or
 derivation proceeding via an appropriate reissue application if such a reissue
 application may be filed (see MPEP § 1449.02 ).
 

 H. Issues Not Considered in Reexamination Ordered under 35 U.S.C.
 304 If questions other than those indicated above (for example,
 questions of patentability based on public use or on sale, conduct issues,
 abandonment under pre-AIA 35 U.S.C. 102(c) for a patent that was examined under
 the first-to-invent prior art regime, etc.) are raised by the third party requester
 or the patent owner during a reexamination proceeding, the existence of such
 questions will be noted by the examiner in an Office action. 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 Ex Parte 
 Reexamination
 

 An issue has been raised in the present
 reexamination proceeding that is not within the scope of an ex parte 
 reexamination ordered under 35 U.S.C. 304 . [1] . This issue will not be considered in
 the present proceeding. 37
 CFR 1.552(c) .
 

 Examiner Note:
 
 1. In bracket 1, identify the
 issues.
 

 2. This paragraph may be used
 either when the patent owner or third party requester raises issues such as public use
 or on sale, conduct, or abandonment of the invention. Such issues should not be raised
 independently by the patent examiner.
 
 
 

 If questions of patentability based on public use or on sale,
 conduct issues, abandonment under pre-AIA 35 U.S.C. 102(c) for
 reexamination proceedings under 35 U.S.C. 302 examined under the
 first-to-invent prior art regime, etc. are independently discovered by the examiner
 during a reexamination proceeding but were not raised by the third party requester or
 the patent owner, the existence of such questions will not be
 noted by the examiner in an Office action, because 37 CFR 1.552(c) 
 is only directed to such questions “raised by the patent owner or the third party
 requester.”
 

 I. Request for Reexamination under 35 U.S.C. 302 Filed on Patent After It
 Has Been Reissued Where a request for reexamination under 35 U.S.C. 302 
 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 under
 35 U.S.C.
 252 . 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. 
 

 Any amendment submitted by the patent owner to accompany the
 initial reexamination request under 35 U.S.C. 302 , or filed after
 reexamination has been ordered under 35 U.S.C. 304 (or, for that
 matter, under 35 U.S.C. 257 ), should treat the
 changes made by the granted reissue patent as the text of the patent, and all
 bracketing and underlining made with respect to the patent as changed by the
 reissue .
 

 Where the reissue patent issues after the filing of a request for
 reexamination, see MPEP § 2285 .
 

 J. No Preissuance Submissions Because a reexamination proceeding is a post-issuance
 proceeding, a preissuance submission under 35 U.S.C.
 122(e) is not permitted to be filed in a reexamination
 proceeding; 35 U.S.C. 122(e) is limited to
 preissuance submissions by third parties in patent applications. A preissuance
 submission filed in a reexamination proceeding is not to be entered, and will be
 expunged if it is inadvertently entered.
 

 
 2258.01 Use of Previously Cited/Considered Art in
 Rejections [R-07.2022]
 

 In the examining stage of a reexamination proceeding, the examiner
 will consider whether the claims are subject to rejection based on art. Before making
 such a rejection, the examiner should check the patent’s file history to ascertain
 whether the art that will provide the basis for the rejection was previously
 cited/considered in an earlier concluded Office examination of the patent (e.g., in the
 examination of the application for the patent). For the sake of expediency, such art is
 referred to as “old art” throughout, since the term “old art” was coined by the Federal
 Circuit in its decision of In re Hiniker, 150 F.3d 1362, 1365-66, 47
 USPQ2d 1523, 1526 (Fed. Cir. 1998).
 

 If the rejection to be made by the examiner will be based on a
 combination of “old art” and art newly cited during the reexamination proceeding, the
 rejection is proper, and should be made. See In re Hiniker, 150 F.3d
 at 1367, 47 USPQ2d at 1527. (Court held the reexamination proceeding was supported by a
 substantial new question of patentability where the rejection before the court was based
 on a combination of art that had been before the examiner during the original
 prosecution, and art newly cited during the reexamination proceeding.)
 

 If the “old art” provides the sole basis for a rejection,
 the following applies:
 

 
 (A) Reexamination was ordered on or after November 2,
 2002: 

 
 For a reexamination that was ordered on or after November 2, 2002 (the
 date of enactment of Public Law 107-273; see Section 13105, of the Patent and Trademark
 Office Authorization Act of 2002), reliance solely on old art (as the basis for a
 rejection) does not necessarily preclude the existence of a substantial new question of
 patentability (SNQ) that is based exclusively on that old art. Determinations on whether
 a SNQ exists in such an instance shall be based upon a fact-specific inquiry done on a
 case-by-case basis. For example, a SNQ may be based solely on old art where the old art
 is being presented/viewed in a new light, or in a different way, as compared with its
 use in the earlier concluded examination(s), in view of a material new argument or
 interpretation presented in the request.
 

 When an Office action is being considered, and it is newly determined
 that a SNQ based solely on old art is raised by a request in a reexamination that was
 ordered on or after November 2, 2002, form paragraph 22.01.01 should be
 included in the Office action. Form paragraph 22.01.01 should be
 included in any Office action in which a SNQ based solely on the old art is first set
 forth (i.e., it was not set forth in the order granting reexamination or a prior Office
 action in the proceeding). 
 

 ¶ 22.01.01 Criteria for Applying 
 "Old
 Art"
 
 
 as Sole Basis for Reexamination
 

 The above [1] is based solely on patents and/or printed
 publications already cited/considered in an earlier concluded examination or review of the
 patent being reexamined, or has been raised to or by the Office in a pending reexamination or
 supplemental examination of the patent. On November 2, 2002, Public Law 107-273 was enacted.
 Title III, Subtitle A, Section 13105, part (a) of the Act revised the reexamination statute by
 adding the following new last sentence to 35 U.S.C. 303(a) and 312(a) :
 

 
 "The existence of a substantial new question of patentability is
 not precluded by the fact that a patent or printed publication was previously cited by or
 to the Office or considered by the Office."
 

 
 For any reexamination ordered on or
 after November 2, 2002, the effective date of the statutory revision, reliance on previously
 cited/considered art, i.e., “old art,” does not necessarily preclude the existence of a
 substantial new question of patentability (SNQ) that is based exclusively on that old art.
 Rather, determinations on whether a SNQ exists in such an instance shall be based upon a
 fact-specific inquiry done on a case-by-case basis.
 

 In the present instance, there exists
 a SNQ based solely on [2] . A discussion of the specifics now
 follows:
 

 [3] 

 Examiner Note:
 
 1. In bracket 1, insert 
 "substantial new question of patentability"
 
 
 if the present form
 paragraph is used in an order granting reexamination (or a TC or CRU Director’s decision
 on petition of the denial of reexamination). If this form paragraph is used in an Office
 action, insert 
 "ground of
 rejection."
 
 
 
 

 2. In bracket 2, insert the old art
 that is being applied as the sole basis of the SNQ. For example, 
 "the patent to J. Doe"
 
 
 or
 
 "the patent to J. Doe when taken with the
 Jones publication"
 
 
 or 
 "the combination of the patent to J. Doe and the Smith
 publication"
 
 
 could be inserted. Where more than one SNQ is
 presented based solely on old art, the examiner would insert all such bases for
 SNQ.
 

 3. In bracket 3, for each basis identified in bracket 2, explain how
 and why that fact situation applies in the proceeding being acted on. The explanation
 could be for example that the old art is being presented/viewed in a new light, or in a
 different way, as compared with its use in the earlier examination(s), in view of a
 material new argument or interpretation presented in the request. See Ex parte
 Chicago Rawhide Mfg. Co., 223 USPQ 351 (Bd. Pat. App. & Inter.
 1984).
 

 4. This form paragraph is only used
 the first time the 
 "already
 cited/considered"
 
 
 art is applied, and is not repeated for the
 same art in subsequent Office actions.
 
 
 

 
 (B) Reexamination was ordered prior to November 2,
 2002 :
 

 
 For a reexamination that was ordered prior to November 2, 2002, old art
 cannot (subject to the exceptions set forth below) be used as the
 sole basis for a rejection.
 

 In determining the presence or absence of “a substantial new question
 of patentability” on which to base a rejection, the use of “old art” in a reexamination
 that was ordered prior to November 2, 2002, is controlled by In re Portola
 Packaging Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997). (Note that
 Portola Packaging was decided based on the reexamination statute
 as it existed prior to the amendment by Public Law 107-273, Section 13105 of the Patent
 and Trademark Office Authorization Act of 2002). The amendment by Public Law 107-273,
 Section 13105, overruled the Portola Packaging decision for any
 reexamination that was ordered on or after November 2, 2002. See In re
 Bass, 314 F.3d 575, 576-77, 65 USPQ2d 1156, 1157 (Fed. Cir. 2002) where the
 court stated in the sole footnote:
 

 
 On November 2, 2002, 35 U.S.C. 303(a) was amended by the passage of
 Pub. L. No. 107-273, 13105, (116 Stat.) 1758, 1900, to add “[t]he existence of a
 substantial new question of patentability is not precluded by the fact that a patent
 or printed publication was previously cited by or to the Office or considered by the
 Office,” thereby overruling Portola Packaging. 

 
 The following guidelines are provided for reviewing
 ongoing reexaminations ordered prior to November 2, 2002 , for compliance
 with the Portola Packaging decision.
 

 
 
 
 (1) General principles governing compliance with
 Portola Packaging for ongoing reexaminations ordered
 prior to November 2, 2002.
 
 

 

 If prior art was previously relied upon to reject a claim
 in a concluded prior related Office proceeding, the Office will not conduct
 reexamination based only on such prior art. “Prior related Office
 proceedings” include the application which matured into the patent that is
 being reexamined, any reissue application for the patent, and any
 reexamination proceeding for the patent.
 

 
 

 

 If prior art was not relied upon to reject a claim, but was
 cited in the record of a concluded prior related Office proceeding, and its
 relevance to the patentability of any claim was actually discussed on the
 record, the Office will not conduct reexamination based only on such prior
 art. The relevance of the prior art to patentability may have been discussed
 by the applicant, patentee, examiner, or any third party. However,
 37 CFR
 1.2 requires that all Office business be transacted in
 writing. Thus, the Office cannot presume that a prior art reference was
 previously relied upon or discussed in a prior Office proceeding if there is
 no basis in the written record to so conclude other than the examiner’s
 initials or a check mark on a form PTO/SB/08 or PTO/SB/42 (or on a form
 having a format equivalent to one of these forms) submitted with an
 information disclosure statement. Thus, any specific discussion of prior art
 must appear on the record of a prior related Office proceeding. Generalized
 statements such as the prior art is “cited to show the state of the art,”
 “cited to show the background of the invention,” or “cited of interest”
 would not preclude reexamination. 
 

 
 

 

 The Office may conduct reexamination based on prior art
 that was cited but whose relevance to patentability of the claims was not
 discussed in any prior related Office proceeding.
 

 

 (2) Procedures for determining whether the prosecution of an
 ongoing reexamination must be terminated in compliance with Portola
 Packaging. 
 

 

 Office personnel must adhere to the following procedures
 when determining whether the prosecution of an ongoing reexamination should
 be terminated in compliance with the Federal Circuit’s decision in
 Portola Packaging. 

 
 (a) Ascertain that the order granting reexamination was
 mailed prior to November 2, 2002. If the order granting reexamination
 was not mailed prior to November 2, 2002, see above “Reexamination was
 ordered on or after November 2, 2002” for guidance.
 

 (b) Prior to making any rejection in the ongoing
 reexamination, determine for any prior related Office proceeding what
 prior art was (i) relied upon to reject any claim, or (ii) cited and
 discussed.
 

 (c) Base any and all rejections of the patent claims
 under reexamination at least in part on prior art that was, in any
 prior related Office proceeding, neither (i) relied upon to reject any
 claim, nor (ii) cited and its relevance to patentability of any claim
 discussed.
 

 (d) Withdraw any rejections based only on prior art that
 was, in any prior related Office proceeding, previously either (i)
 relied upon to reject any claim, or (ii) cited and its relevance to
 patentability of any claim discussed.
 

 (e) Terminate the prosecution of any reexamination in
 which the only remaining rejections are entirely based on prior art
 that was, in any prior related Office proceeding, previously (i)
 relied upon to reject any claim, and/or (ii) cited and its relevance
 to patentability of a claim discussed. 
 
 

 

 The Director of the USPTO may conduct a search for
 new art to determine whether a substantial new question of
 patentability exists prior to terminating the prosecution of any
 ongoing reexamination proceeding. See 35 U.S.C.
 303 . See also 35 U.S.C.
 305 (indicating that “reexamination will be
 conducted according to the procedures established for initial
 examination,” thereby suggesting that the Director of the USPTO may
 conduct a search during an ongoing reexamination proceeding).
 

 

 
 

 (3) Application of Portola Packaging to
 unusual fact patterns.
 

 
 

 
 The Office recognizes that each case must be decided on its particular
 facts and that cases with unusual fact patterns will occur. In such a case, the
 reexamination should be brought to the attention of the Central Reexamination Unit (CRU)
 or Technology Center (TC) Director who will then determine the appropriate action to be
 taken.
 

 Unusual fact patterns may appear in cases in which prior art was
 relied upon to reject any claim or cited and discussed with respect to the patentability
 of a claim in a prior related Office proceeding, but other evidence clearly shows that
 the examiner did not appreciate the issues raised in the reexamination request or the
 ongoing reexamination with respect to that art. Such other evidence may appear in the
 reexamination request, in the nature of the prior art, in the prosecution history of the
 prior examination, or in an admission by the patent owner, applicant, or inventor. See
 37 CFR
 1.104(c)(3) .
 

 The following examples are intended to be illustrative and not
 inclusive.
 

 For example, if a textbook was cited during prosecution of the
 application which matured into the patent, the record of that examination may show that
 only select information from the textbook was discussed with respect to the
 patentability of the claims. The file history of the prior Office proceeding should
 indicate which portion of the textbook was previously considered. See 37 CFR
 1.98(a)(2)(ii) (an information disclosure statement must include a
 copy of each “publication or that portion which caused it to be listed”). If a
 subsequent reexamination request relied upon other information in the textbook that
 actually teaches what is required by the claims, it may be appropriate to rely on this
 other information in the textbook to order and/or conduct reexamination. However, a
 reexamination request that merely provides a new interpretation of a reference already
 previously relied upon or actually discussed by the Office does not create a substantial
 new question of patentability.
 

 Another example involves the situation where an examiner discussed a
 reference in a prior Office proceeding, but did not either reject a claim based upon the
 reference or maintain the rejection based on the mistaken belief that the reference did
 not qualify as prior art. For example, the examiner may not have believed that the
 reference qualified as prior art because: (i) the reference was undated or was believed
 to have a bad date; (ii) the applicant submitted a declaration believed to be sufficient
 to antedate the reference under 37 CFR 1.131(a) ; or (iii) the
 examiner attributed an incorrect filing date to the claimed invention. If the
 reexamination request were to explain how and why the reference actually does qualify as
 prior art, it may be appropriate to rely on the reference to order and/or conduct
 reexamination. For example, the request could: (i) verify the date of the reference;
 (ii) undermine the sufficiency of the declaration filed under 37 CFR
 1.131(a) (by a showing of an inaccuracy/mistake of fact in the
 declaration); or (iii) explain the correct filing date accorded a claim where the issue
 was not previously addressed in an earlier examination of the patent. See e.g.,
 Heinl v. Godici, 143 F. Supp.2d 593 (E.D.Va. 2001) (reexamination
 on the basis of art previously presented without adequate proof of date may proceed if
 prior art status is now established).
 

 Another example involves foreign language prior art references. If a
 foreign language prior art reference was cited and discussed in any prior Office
 proceeding but the foreign language prior art reference was never completely and
 accurately translated into English during the original prosecution, Portola
 Packaging may not prohibit reexamination over a complete and accurate
 translation of that foreign language prior art reference. Specifically, if a
 reexamination request were to explain why a more complete and accurate translation of
 that same foreign language prior art reference actually teaches what is required by the
 patent claims, it may be appropriate to rely on the foreign language prior art reference
 to order and/or conduct reexamination.
 

 Another example of an unusual fact pattern involves cumulative
 references. To the extent that a cumulative reference is repetitive of a prior art
 reference that was previously applied or discussed, Portola Packaging 
 may prohibit reexamination of the patent claims based only on the repetitive reference.
 For purposes of reexamination, a cumulative reference that is repetitive is one that
 substantially reiterates verbatim the teachings of a reference that was either
 previously relied upon or discussed in a prior Office proceeding even though the title
 or the citation of the reference may be different. However, it is expected that a
 repetitive reference which cannot be considered by the Office during reexamination will
 be a rare occurrence since most references teach additional information or present
 information in a different way than other references, even though the references might
 address the same general subject matter.
 

 
 
 
 (4) Notices regarding compliance with Portola
 Packaging. 
 (a) If the prosecution of an ongoing reexamination is
 terminated under (2)(e) above in order to comply with the Federal
 Circuit’s decision in Portola Packaging, the Notice
 of Intent to Issue Ex Parte Reexamination
 Certificate should state: 
 
 “The prosecution of this reexamination is
 terminated based on In re Portola Packaging,
 Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997).
 No patentability determination has been made in this reexamination
 proceeding.”
 

 
 

 (b) If a rejection in the reexamination has previously
 been issued and that rejection is withdrawn under (2)(d) above in
 order to comply with the Federal Circuit’s decision in
 Portola Packaging, the Office action withdrawing
 such rejection should state: 
 
 “The rejection(s) based upon _______is/are
 withdrawn in view of In re Portola Packaging,
 Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997).
 No patentability determination of the claims of the patent in view
 of such prior art has been made in this reexamination
 proceeding.”
 

 
 

 
 

 
 

 
 

 
 2258.02 Claiming Foreign Priority and Domestic Benefit in
 Reexamination [R-01.2024]
 

 The patent owner may correct the failure to adequately
 claim foreign priority or domestic benefit in a patent to be reexamined during
 reexamination in accordance with the guidelines set forth in this section. However, a
 renewal of previously made claims for foreign priority under 35 U.S.C. 119 or
 domestic benefit under 35 U.S.C. 119(e) or 120 , is not necessary during
 reexamination. Note that a design application cannot claim the benefit of a provisional
 application. See MPEP § 211.02 , subsection III; see also
 MPEP §
 1504.20 for benefit information specific to design
 applications.
 

 I. FOREIGN PRIORITY 
 

 A. Claim Made Before Patent Granted; Certified Copy Needed to Perfect
 Priority The patent owner may obtain the right of foreign
 priority under 35 U.S.C. 119(a)-(d) where a claim for priority had been
 made before the patent was granted, and it is only necessary for submission of the
 certified copy in the reexamination proceeding to perfect priority.
 

 However, where a petition to accept a delayed
 certified copy under 37 CFR 1.55(f) or (g) is
 required (such as, for example, when the application which matured in the patent
 to be reexamined was filed on or after March 16, 2013), a grantable petition, the
 appropriate fee, and any required attachments must be filed in the file of the
 application that matured into the patent to be reexamined. See
 MPEP § 215.02 for further guidance. In addition, a
 letter must be filed as a separate paper in the reexamination proceeding,
 notifying the Office that a petition to accept a delayed certified copy under
 37
 CFR 1.55(f) or (g) , the appropriate fee, and any required
 attachments was or is being concurrently filed in the file of the patent to be
 reexamined. When a decision on the petition to accept a delayed certified copy
 under 37 CFR 1.55(f) or (g) is rendered in the file of the
 application that matured into the patent to be reexamined, a copy of the decision
 will also be placed in the file of the reexamination proceeding.
 

 B. Submitting for the First Time Both the Claim for Foreign Priority and
 the Certified Copy The patent owner may obtain the right of foreign
 priority under 35 U.S.C. 119(a)-(d) where the claim for foreign priority
 was not previously made. However, a grantable petition for an unintentionally
 delayed priority claim under 37 CFR 1.55(e) must be filed.
 The petition, and any required attachments, must be filed in the file of the
 application which matured into the patent to be reexamined, and a letter must be
 filed in the reexamination proceeding as a separate paper notifying the Office
 that the petition and accompanying attachments was or is concurrently being filed
 in the application (identifying the application number) which matured into the
 patent to be reexamined, according to the following guidance:
 

 1. Application Which Became Patent to be Reexamined Filed On or After
 September 16, 2012 If the patent to be reexamined matured from an
 application filed on or after September 16, 2012, the patent owner must file in
 the File of the Application Which Matured into the Patent to be
 Reexamined :
 

 
 (a) A grantable petition for an
 unintentionally delayed priority claim under 37 CFR
 1.55(e) ; 
 

 (b) An application data sheet
 ( 37 CFR 1.76(b)(6) ), identifying the foreign
 application to which priority is claimed, by specifying the application
 number, country (or intellectual property authority), day, month, and
 year of its filing, unless previously submitted; 
 

 (c) A certified copy of the foreign
 application, unless previously submitted, or the exception in
 37 CFR 1.55(h) is
 applicable;
 

 (d) The petition fee as set forth in
 37 CFR 1.17(m) ;
 and
 

 (e) A statement that the entire delay between
 the date the priority claim was due under 37 CFR
 1.55 and the date the priority claim was filed was
 unintentional. The Director may require additional information where
 there is a question whether the delay was unintentional. Additionally, a
 person filing a petition to accept a delayed priority claim more than two
 years after the date the foreign priority claim was due is required to
 provide additional explanation of the circumstances surrounding the delay
 that establishes that the entire delay was unintentional. See
 MPEP § 214.02 .
 

 (f) In the Reexamination Proceeding: 
 
 

 

 A letter, as a separate paper, notifying
 the Office that items (a)-(e), as applicable, was or is concurrently
 being filed in the file of the application which matured into the patent
 to be reexamined.
 

 
 

 

 When a decision on the petition for an
 unintentionally delayed priority claim under 37 CFR
 1.55(e) is rendered in the file of the application
 which matured into the patent to be reexamined, a copy of the decision
 will also be placed in the file of the reexamination proceeding. In
 addition, if the petition is granted, a copy of the application data
 sheet which was determined by the Office in its decision to meet the
 requirements of 37 CFR 1.55(e) (and
 all other applicable requirements), will also be placed in the file of
 the reexamination proceeding. 
 

 

 2. Application Which Became Patent to be Reexamined Filed Before September
 16, 2012 If the patent to be reexamined matured from an
 application filed before September 16, 2012, the patent owner must file in the
 File of the Application Which Matured into the Patent to be
 Reexamined :
 

 
 (a) A grantable petition for an
 unintentionally delayed priority claim under 37 CFR
 1.55(e) ; 
 

 (b) Unless previously submitted, either (i) an
 application data sheet ( 37 CFR 1.76(b)(6) ) or
 (ii) an oath or declaration under 37 CFR 1.63 ; where
 the application data sheet, oath or declaration, whichever is filed,
 identifies the foreign application to which priority is claimed, by
 specifying the application number, country (or intellectual property
 authority), day, month, and year of its filing (see 37 CFR
 1.55(n) ); 
 

 (c) A certified copy of the foreign
 application, unless previously submitted, or the exception in
 37 CFR 1.55(h) is
 applicable;
 

 (d) The petition fee as set forth in
 37 CFR 1.17(m) ;
 and
 

 (e) A statement that the entire delay between
 the date the priority claim was due under 37 CFR
 1.55 and the date the priority claim was filed was
 unintentional. The Director may require additional information where
 there is a question whether the delay was unintentional. Additionally, a
 person filing a petition to accept a delayed priority claim more than two
 years after the date the foreign priority claim was due is required to
 provide additional explanation of the circumstances surrounding the delay
 that establishes that the entire delay was unintentional. See
 MPEP § 214.02 .
 

 (f) In the Reexamination Proceeding: 
 
 

 

 A letter, as a separate paper, notifying
 the Office that items (a)-(e), as applicable, was or is concurrently
 being filed in the file of the application which matured into the patent
 to be reexamined.
 

 

 
 When a decision on the petition for an
 unintentionally delayed priority claim under 37 CFR
 1.55(e) is rendered in the file of the application which
 matured into the patent to be reexamined, a copy of the decision will also be
 placed in the file of the reexamination proceeding. In addition, if the
 petition is granted, a copy of the application data sheet, oath, or
 declaration, which was determined by the Office in its decision to meet the
 requirements of 37 CFR 1.55(e) (and all
 other applicable requirements), will also be placed in the file of the
 reexamination proceeding. 
 

 For further guidance on the requirements for a
 grantable petition for an unintentionally delayed priority claim under
 37 CFR 1.55(e) , see MPEP §
 214.02 . 
 

 C. Restoring Right of Foreign Priority Where the Filing of the
 Subsequent Application Was Delayed The patent owner may also restore the right of
 foreign priority under 35 U.S.C. 119(a)-(d) where the
 filing of the subsequent application was delayed, in accordance with
 37 CFR
 1.55(c) . A grantable petition to restore the right of
 foreign priority and any required attachments, including an application data
 sheet, must be filed in the application specified in 37 CFR
 1.55(c) , not in the reexamination proceeding. A letter must
 be filed in the reexamination proceeding as a separate paper notifying the Office
 that the petition and accompanying attachments was or is concurrently being filed
 in the application specified in 37 CFR 1.55(c) (identifying
 the application number). 
 

 When a decision on the petition to restore the
 right of foreign priority under 37 CFR 1.55(c) is rendered in
 the file of the application specified in 37 CFR 1.55(c) , a copy of the
 decision will also be placed in the file of the reexamination proceeding. In
 addition, if the petition is granted, a copy of the application data sheet which
 was determined by the Office in its decision to meet the requirements of
 37 CFR
 1.55(c) (and all other applicable requirements), will also
 be placed in the file of the reexamination proceeding. 
 

 For further guidance on the requirements for a
 grantable petition to restore the right of foreign priority under
 37 CFR
 1.55(c) , see MPEP §
 213.03 , subsection III. 
 

 II. DOMESTIC BENEFIT 
 

 A. Claiming Benefit under 35 U.S.C. 120 The patent owner may also correct the failure to
 adequately claim (in the application for the patent to be reexamined) benefit
 under 35
 U.S.C. 120 of an earlier filed copending U.S. patent
 application. For a patent to be reexamined, a grantable petition for an
 unintentionally delayed benefit claim under 37 CFR
 1.78(e) must be filed. The petition, and any required
 attachments (with the exception of an amendment to the first sentence(s) of the
 specification if the application which matured into the patent to be reexamined is
 a nonprovisional application filed before September 16, 2012 – see subsection
 II.A.2. below), must be filed in the file of the application which matured into
 the patent to be reexamined, and a letter must be filed in the reexamination
 proceeding as a separate paper notifying the Office that the petition and
 accompanying attachments was or is concurrently being filed in the application
 (identifying the application number) which matured into the patent to be
 reexamined, according to the following guidance:
 

 1. Application Which Became Patent to be Reexamined Filed On or After
 September 16, 2012 If the patent to be reexamined matured from an
 application filed on or after September 16, 2012, the patent owner must file in
 the File of the Application Which Matured into the Patent to be
 Reexamined :
 

 
 (a) A grantable petition for an
 unintentionally delayed benefit claim under 37 CFR
 1.78(e) ; 
 

 (b) An application data sheet including the
 reference required by 35 U.S.C. 120 and
 37 CFR 1.78(d)(2) to
 the prior-filed application ( 37 CFR 1.76(b)(5) ),
 unless previously submitted;
 

 (c) The petition fee as set forth in
 37 CFR 1.17(m) ;
 and
 

 (d) A statement that the entire delay between
 the date the benefit claim was due under 37 CFR
 1.78(d)(3) and the date the benefit claim was filed
 was unintentional. The Director may require additional information where
 there is a question whether the delay was unintentional. Additionally, a
 person filing a petition to accept a delayed benefit claim more than two
 years after the date the benefit claim was due is required to provide
 additional explanation of the circumstances surrounding the delay that
 establishes that the entire delay was unintentional. See
 MPEP § 211.04 .
 

 (e) In the Reexamination Proceeding: 
 
 

 

 A letter, as a separate paper, notifying
 the Office that items (a)-(d), as applicable, was or is concurrently
 being filed in the file of the application which matured into the patent
 to be reexamined.
 

 

 
 When a decision on the petition for an
 unintentionally delayed benefit claim under 37 CFR
 1.78(e) is rendered in the file of the application which
 matured into the patent to be reexamined, a copy of the decision will also be
 placed in the file of the reexamination proceeding. In addition, if the
 petition is granted, a copy of the application data sheet which was determined
 by the Office in its decision to meet the requirements of 37 CFR
 1.78(e) (and all other applicable requirements), will
 also be placed in the file of the reexamination proceeding.
 

 2. Application Which Became Patent to be Reexamined Filed Before September
 16, 2012 If the patent to be reexamined matured from an
 application filed before September 16, 2012, the patent owner must file in the
 File of the Application Which Matured into the Patent to be
 Reexamined :
 

 
 (a) A grantable petition for an
 unintentionally delayed benefit claim under 37 CFR
 1.78(e) ; 
 

 (b) If the patent owner does not choose to
 file an amendment as set forth in (e) below in the reexamination
 proceeding, an application data sheet including the reference required by
 35 U.S.C. 120 and 37 CFR
 1.78(d)(2) to the prior-filed application
 ( 37 CFR 1.76(b)(5) ), unless previously submitted;
 
 

 (c) The petition fee as set forth in
 37 CFR 1.17(m) ;
 and
 

 (d) A statement that the entire delay between
 the date the benefit claim was due under 37 CFR
 1.78(d)(3) and the date the benefit claim was filed
 was unintentional. The Director may require additional information where
 there is a question whether the delay was unintentional. Additionally, a
 person filing a petition to accept a delayed benefit claim more than two
 years after the date the benefit claim was due is required to provide
 additional explanation of the circumstances surrounding the delay that
 establishes that the entire delay was unintentional. See
 MPEP § 211.04 .
 

 (e) In the Reexamination Proceeding:
 
 

 

 If the patent owner does not choose to
 file an application data sheet as set forth in (b) above in the
 application which matured into the patent to be reexamined, an amendment
 inserting the reference required by 35 U.S.C.
 120 and 37 CFR
 1.78(d)(2) to the prior-filed application in the
 first sentence(s) of the specification following the title as set forth
 in 37 CFR 1.78(h) ,
 unless previously submitted; and
 

 

 (f) In the Reexamination Proceeding: 
 A letter, as a separate paper, notifying
 the Office that items (a)-(d), as applicable, was or is concurrently
 being filed in the file of the application which matured into the patent
 to be reexamined.
 

 

 
 When a decision on the petition for an
 unintentionally delayed benefit claim under 37 CFR
 1.78(e) is rendered in the file of the application which
 matured into the patent to be reexamined, a copy of the decision will also be
 placed in the file of the reexamination proceeding. In addition, if the
 petition is granted, a copy of any application data sheet, where applicable,
 which was determined by the Office in its decision to meet the requirements of
 37 CFR 1.78(e) (and all other applicable requirements),
 will also be placed in the file of the reexamination proceeding.
 

 Note, if the application which matured into the
 patent to be reexamined is a nonprovisional application filed before September
 16, 2012, the patent owner must choose to either (i) file, in the
 application which matured into the patent to be reexamined, an application data
 sheet including the reference required by 35 U.S.C.
 120 and 37 CFR 1.78(d)(2) to the
 prior-filed application ( 37 CFR 1.76(b)(5) ), unless
 previously submitted; or (ii) file, in the reexamination
 proceeding, an amendment inserting the reference required by 35 U.S.C.
 120 and 37 CFR 1.78(d)(2) to the
 prior-filed application in the first sentence(s) of the specification following
 the title as set forth in 37 CFR 1.78(h) , unless
 previously submitted. See (b) and (e) above. 
 

 For further guidance on the requirements for a
 petition for an unintentionally delayed benefit claim under 37 CFR
 1.78(e) , see MPEP §
 211.04 .
 

 B. Claiming Benefit under 35 U.S.C. 119(e) The patent owner may correct, in a patent to be
 reexamined which matured from a utility or plant application, the failure to
 adequately claim benefit under 35 U.S.C. 119(e) of an earlier
 filed provisional application. A design application cannot claim the benefit of a
 provisional application. See MPEP § 211.02 ; see also
 MPEP §
 1504.20 for benefit information specific to design
 applications.
 

 In order to make such a correction in a utility or
 plant patent, the patent owner must file a grantable petition for an
 unintentionally delayed claim under 35 U.S.C. 119(e) , pursuant to
 37 CFR
 1.78(c) . The petition, and any required attachments (with
 the exception of an amendment to the first sentence(s) of the specification if the
 application which matured into the patent to be reexamined is a nonprovisional
 utility or plant application filed before September 16, 2012 – see subsection
 II.B.2. below), must be filed in the file of the application which matured into
 the patent to be reexamined, and a letter must be filed in the reexamination
 proceeding as a separate paper notifying the Office that the petition and
 accompanying attachments was or is concurrently being filed in the application
 (identifying the application number) which matured into the patent to be
 reexamined, according to the following guidance:
 

 1. Application Which Became Patent to be Reexamined Filed On or After
 September 16, 2012 If the patent to be reexamined matured from a
 utility or plant application filed on or after September 16, 2012, the patent
 owner must file in the File of the Application Which Matured into
 the Patent to be Reexamined :
 

 
 (a) A grantable petition for an unintentionally
 delayed claim under 35 U.S.C. 119(e) ,
 pursuant to 37 CFR 1.78(c) ; 
 

 (b) An application data sheet including the
 reference required by 35 U.S.C. 119(e) and
 37 CFR 1.78(a)(3) to the prior-filed provisional
 application; unless previously submitted; 
 

 (c) The petition fee as set forth in
 37 CFR 1.17(m) ;
 and
 

 (d) A statement that the entire delay between
 the date the benefit claim was due under 37 CFR
 1.78(a)(4) and the date the benefit claim was filed
 was unintentional. The Director may require additional information where
 there is a question whether the delay was unintentional. Additionally, a
 person filing a petition to accept a delayed benefit claim more than two
 years after the date the benefit claim was due is required to provide
 additional explanation of the circumstances surrounding the delay that
 establishes that the entire delay was unintentional. See
 MPEP § 211.04 .
 

 (e) In the Reexamination Proceeding: 
 
 

 

 A letter, as a separate paper, notifying
 the Office that items (a)-(d), as applicable, was or is concurrently
 being filed in the file of the application which matured into the patent
 to be reexamined.
 

 

 
 When a decision on the petition for an
 unintentionally delayed claim under 35 U.S.C. 119(e) is
 rendered in the file of the application which matured into the patent to be
 reexamined, a copy of the decision will also be placed in the file of the
 reexamination proceeding. In addition, if the petition is granted, a copy of
 the application data sheet which was determined by the Office in its decision
 to meet the requirements of 35 U.S.C. 119(e) (and all
 other applicable requirements), will also be placed in the file of the
 reexamination proceeding.
 

 2. Application Which Became Patent to be Reexamined Filed Before September
 16, 2012 If the patent to be reexamined matured from a
 utility or plant application filed before September 16, 2012, the patent owner
 must file in the File of the Application Which Matured into the
 Patent to be Reexamined :
 

 
 (a) A grantable petition for an
 unintentionally delayed claim under 35 U.S.C. 119(e) ,
 pursuant to 37 CFR 1.78(c) ;
 

 (b) If the patent owner does not choose to
 file an amendment as set forth in (e) below in the reexamination
 proceeding, an application data sheet including the reference required by
 35
 U.S.C. 119(e) and 37 CFR
 1.78(a)(3) to the prior-filed provisional
 application; unless previously submitted;
 

 (c) The petition fee as set forth in
 37 CFR 1.17(m) ;
 and
 

 (d) A statement that the entire delay between
 the date the benefit claim was due under 37 CFR
 1.78(a)(4) and the date the benefit claim was filed
 was unintentional. The Director may require additional information where
 there is a question whether the delay was unintentional. Additionally, a
 person filing a petition to accept a delayed benefit claim more than two
 years after the date the benefit claim was due is required to provide
 additional explanation of the circumstances surrounding the delay that
 establishes that the entire delay was unintentional. See
 MPEP § 211.04 .
 

 (e) In the Reexamination Proceeding:
 
 

 

 If the patent owner does not choose to
 file an application data sheet as set forth in (b) above in the
 application which matured into the patent to be reexamined, an amendment
 inserting the reference required by 35 U.S.C. 119(e) and
 37 CFR 1.78(a)(3) to the prior-filed application
 in the first sentence(s) of the specification following the title as set
 forth in 37 CFR 1.78(h) ,
 unless previously submitted; and
 

 

 (f) In the Reexamination Proceeding: 
 
 

 

 A letter, as a separate paper, notifying
 the Office that items (a)-(d), as applicable, was or is concurrently
 being filed in the file of the application which matured into the patent
 to be reexamined.
 

 

 
 When a decision on the petition for an
 unintentionally delayed claim under 35 U.S.C. 119(e) is
 rendered in the file of the application which matured into the patent to be
 reexamined, a copy of the decision will also be placed in the file of the
 reexamination proceeding. In addition, if the petition is granted, a copy of
 any application data sheet, where applicable, which was determined by the
 Office in its decision to meet the requirements of 35 U.S.C.
 119(e) (and all other applicable requirements), will also
 be placed in the file of the reexamination proceeding.
 

 Note, if the application which matured into the
 patent to be reexamined is a nonprovisional utility or plant application filed
 before September 16, 2012, the patent owner must choose to either (i) file, in
 the application which matured into the patent to be reexamined, an application
 data sheet including the reference required by 35 U.S.C.
 119(e) and 37 CFR 1.78(a)(3) to the
 prior-filed application ( 37 CFR 1.76(b)(5) ), unless
 previously submitted; or (ii) file, in the reexamination proceeding, an
 amendment inserting the reference required by 35 U.S.C.
 119(e) and 37 CFR 1.78(a)(3) to the
 prior-filed application in the first sentence(s) of the specification following
 the title as set forth in 37 CFR 1.78(h) , unless
 previously submitted. See (b) and (e) above.
 

 For further guidance on petitions for an
 unintentionally delayed benefit claim under 35 U.S.C. 119(e) , pursuant
 to 37 CFR
 1.78(c) , see MPEP §
 211.04 . 
 

 C. Restoring the Benefit of a Provisional Application Where the Filing
 of the Application Which Became the Patent to be Reexamined Was
 Delayed The patent owner may also restore the benefit of a
 provisional application where the filing of the application which matured into the
 patent to be reexamined (i.e., the subsequent nonprovisional application) was
 unintentionally delayed, in accordance with 37 CFR
 1.78(b) . The patent owner must file a grantable petition to
 restore the benefit of a provisional application under 37 CFR
 1.78(b) , and any required attachments, including an
 application data sheet meeting the requirements set forth in 37 CFR
 1.78(b) , in the file of the application which matured into
 the patent to be reexamined (i.e., the subsequent application as specified in
 37 CFR 1.78(b) ). A letter must be filed in the
 reexamination proceeding as a separate paper notifying the Office that the
 petition and accompanying attachments was or is concurrently being filed in the
 application (identifying the application number) which matured into the patent to
 be reexamined. Note that a design application cannot claim the benefit of a
 provisional application.
 

 When a decision on the petition to restore the
 benefit of a provisional application is rendered in the file of the application
 which matured into the patent to be reexamined, a copy of the decision will also
 be placed in the file of the reexamination proceeding. In addition, if the
 petition is granted, a copy of the application data sheet which was determined by
 the Office in its decision to meet the requirements of 37 CFR
 1.78(b) (and all other applicable requirements), will also
 be placed in the file of the reexamination proceeding. 
 

 For further guidance on the requirements for a
 grantable petition to restore the benefit of a provisional application under
 37 CFR 1.78(b) , see MPEP §
 211.01(a) , subsection II. 
 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 2201-Introduction 

 2202-Citation of Prior Art and Written Statements 

 2203-Persons Who May Cite Prior Art or Written Statements 

 2204-Time for Filing Prior Art or Section 301 Written Statements 

 2205-Content of Prior Art or Section 301 Written Statements 

 2206-Submission and Handling of Prior Art or Section 301 Written Statements 

 2207-Entry of Court Decision in Patent File 

 2208-Service of Prior Art or Section 301 Written Statements on Patent Owner 

 2209-Ex Parte Reexamination 

 2210-Request for Ex Parte Reexamination under 35 U.S.C. 302 

 2211-Time for Requesting Ex Parte Reexamination under 35 U.S.C. 302 

 2212-Persons Who May File a Request for Ex Parte Reexamination under 35 U.S.C. 302 
 2212.01-Inquiries from Persons Other Than the Patent Owner 

 
 

 2213-Representative of Requester 

 2214-Content of Request for Ex Parte Reexamination Filed under 35 U.S.C. 302 

 2215-Fee for Requesting Ex Parte Reexamination under 35 U.S.C. 302 

 2216-Substantial New Question of Patentability 

 2217-Statement Applying Prior Art in a Request Filed under 35 U.S.C. 302 

 2218-Copies of Prior Art 

 2219-Copy of Printed Patent 

 2220-Certificate of Service 

 2221-Amendments Included in Request Filed under 35 U.S.C. 302 by Patent Owner 

 2222-Address of Patent Owner 

 2223-Withdrawal of Attorney or Agent 

 2224-Correspondence 

 2225-Untimely Paper Filed Prior to Order under 35 U.S.C. 304 

 2226-Initial Processing of Request for Ex Parte Reexamination Filed under 35 U.S.C. 302 

 2227-Incomplete Request for Ex Parte Reexamination Filed under 35 U.S.C. 302 

 2228-[Reserved] 

 2229-Notice of Request under 35 U.S.C. 302 for Ex Parte Reexamination in Official Gazette 

 2230-Constructive Notice to Patent Owner 

 2231-Processing of Request Corrections 

 2232-Public Access to Reexaminations Filed under 35 U.S.C. 302 
 2232.01-Determining if a Reexamination Request Was Filed under 35 U.S.C. 302 for a Patent 

 
 

 2233-Processing in Central Reexamination Unit and Technology Center 

 2234-Entry of Amendments 

 2235-Record Systems 

 2236-Assignment of Reexamination 

 2237-Transfer Procedure 

 2238-Time Reporting 

 2239-Reexamination Ordered at the Director’s Initiative 

 2240-Decision on Request Filed under 35 U.S.C. 302 

 2241-Time for Deciding Request Filed under 35 U.S.C. 302 

 2242-Criteria for Deciding Request Filed under 35 U.S.C. 302 

 2243-Claims Considered in Deciding Request Filed under 35 U.S.C. 302 

 2244-Prior Art on Which the Determination Is Based in Requests Filed under 35 U.S.C. 302 

 2245-Processing of Decision 

 2246-Decision Ordering Reexamination under 35 U.S.C. 304 

 2247-Decision under 35 U.S.C. 303 on Request for Reexamination filed Under 35 U.S.C. 302, Request Denied 
 2247.01-Examples of Decisions on Request for Reexamination 

 
 

 2248-Petition From Denial of Request Filed Under 35 U.S.C. 302 

 2249-Patent Owner’s Statement in Reexaminations Filed Under 35 U.S.C. 302 

 2250-Amendment by Patent Owner 
 2250.01-Correction of Patent Drawings 

 2250.02-Correction of Inventorship 

 2250.03-Fees for Adding Claims and for Filing a Petition 

 
 

 2251-Reply by Third Party Requester 

 2252-Consideration of Statement and Reply 

 2253-Consideration by Examiner 

 2254-Conduct of Ex Parte Reexamination Proceedings 

 2255-Who Reexamines 

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

 2257-Listing of Prior Art 

 2258-Scope of Ex Parte Reexamination 
 2258.01-Use of Previously Cited/Considered Art in Rejections 

 2258.02-Claiming Foreign Priority and Domestic Benefit in Reexamination 

 
 

 2259-Res Judicata and Collateral Estoppel in Reexamination Proceedings 

 2260-Office Actions 
 2260.01-Dependent Claims 

 
 

 2261-Special Status for Action 

 2262-Form and Content of Office Action 

 2263-Time for Response 

 2264-Mailing of Office Action 

 2265-Extension of Time 

 2266-Responses 
 2266.01-Submission Not Fully Responsive to Non-Final Office Action 

 2266.02-Examiner Issues Notice of Defective Paper in Ex Parte Reexamination 

 2266.03-Service of Papers 

 
 

 2267-Handling of Inappropriate or Untimely Filed Papers 

 2268-Petition for Entry of Late Papers for Revival of Reexamination Proceeding 

 2269-Reconsideration 

 2270-Clerical Handling 

 2271-Final Action 
 2271.01-Panel Review 

 
 

 2272-After Final Practice 

 2273-Appeal in Ex Parte Reexamination 

 2274-Appeal Brief 

 2275-Examiner’s Answer 

 2276-Oral Hearing 

 2277-Board Decision 

 2278-Action Following Decision 

 2279-Appeal to Courts 

 2280-Information Material to Patentability in Reexamination Proceeding Filed under 35 U.S.C. 302 

 2281-Interviews in Ex Parte Reexamination Proceedings 

 2282-Notification of Existence of Prior or Concurrent Proceedings and Decisions Thereon 

 2283-Multiple Copending Ex Parte Reexamination Proceedings 

 2284-Copending Ex Parte Reexamination and Interference Proceedings 

 2285-Copending Ex Parte Reexamination and Reissue Proceedings 

 2286-Ex Parte Reexamination and Litigation Proceedings 
 2286.01-Reexamination and Inter Partes Review Proceedings, Post-Grant Review, and Covered Business Method Patent Review 

 
 

 2287-Conclusion of Ex Parte Reexamination Proceeding 
 2287.01-Examiner Consideration of Submissions After a NIRC 

 
 

 2288-Issuance of Ex Parte Reexamination Certificate 

 2289-Reexamination Review 

 2290-Format of Ex Parte Reexamination Certificate 

 2291-Notice of Ex Parte Reexamination Certificate Issuance in Official Gazette 

 2292-Distribution of Certificate 

 2293-Intervening Rights 

 2294-Concluded Reexamination Proceedings 

 2295-Reexamination of a Reexamination 

 2296-USPTO Forms To Be Used In Ex Parte Reexamination 

 

 

 
 

 
 
 

 
 

 

 
 
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 03/09/2026 20:49:34