MPEP § 2205 — MPEP § 2205
Current through: 2022-07-01

2205-Content of Prior Art or Section 301 Written Statements 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2205 
 

 
 
 
 
 
 2205 Content of Prior Art or Section 301 Written Statements [R-01.2024]

 Information that may be submitted under 35 U.S.C.
 301 and 37 CFR 1.501 is limited to prior art
 consisting of patents or printed publications or written statements of the patent owner
 filed in a proceeding before a federal court or the Office by the patent owner in which the
 patent owner took a position on the scope of any claim of the patent (written claim scope
 statements).
 

 Pursuant to 35 U.S.C. 301(b) and 37 CFR 1.501(b) , an
 explanation is required of the pertinence and manner of applying any cited prior art and
 written statements to at least one claim of the patent. The submission must, at a minimum,
 contain some broad statement of the pertinence and manner of applying the cited prior art
 or written statement as to the patentability of the claim(s) of the patent. The explanation
 must set forth, for at least one of the patent claims, how each item cited shows or teaches
 at least one claim limitation. Submissions by patent owners may also include an explanation
 of how the claims of the patent differ from the cited prior art or written statement. 
 

 It is preferred that copies of all the cited prior art 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
 Office during any subsequent reissue, reexamination, or other post-patent proceeding.
 Copies of section 301 written statements must be submitted so that the value
 of the information may be readily determined by persons inspecting the patent files and so
 that the Office may determine the proper meaning of a patent claim after an ex
 parte reexamination, inter partes review, or post-grant
 review has been ordered or instituted. See 35 U.S.C. 301(d) .
 

 All submissions filed by persons other than the patent owner must include
 proper proof of service as required by 37 CFR 1.248(b) reflecting that a copy
 of the submission has been mailed to, or otherwise served upon, the patent owner at the
 correspondence address as defined under 37 CFR 1.33(c) . 37 CFR
 1.501(e) .
 

 All submissions filed should identify the patent to which the citation
 pertains by identifying the patent number, issue date, and patentee using a cover sheet.
 The documents themselves should also contain, or have placed thereon, an identification of
 the patent for which they are intended.
 

 A submission that includes a written statement must also include any other
 accompanying information (documents, pleadings, or evidence) from the proceeding in which
 the statement was filed that addresses the written statement. The written statement and
 accompanying information must be submitted in redacted form to exclude information subject
 to any applicable protective order. 37 CFR 1.501(a)(2) .
 

 A submission that includes section 301 
 written statements must further include the identification of: (1) The forum and proceeding
 in which patent owner filed each statement ( 37 CFR 1.501(a)(3)(i) ); (2) The
 specific papers and portions of the papers submitted that contain the statement
 ( 37 CFR
 1.501(a)(3)(ii) ); and (3) How each statement submitted is a statement
 in which patent owner took a position on the scope of any claim in the patent
 ( 37 CFR
 1.501(a)(3)(iii) ). Identification of the portions of the papers
 required by 37
 CFR 1.501(a)(3)(ii) can be satisfied, for example, by citing to the
 documents and specific pages of those documents where the patent owner claim scope
 statements are found. The requirement of 37 CFR 1.501(a)(3)(iii) ensures that
 the statement is one in which patent owner has taken a position on claim scope in a
 proceeding and not merely a restatement of a position asserted by another party. Other
 information can be provided by the submitter to assist the Office in readily identifying
 the patent owner claim scope statement, such as (1) information regarding the status of the
 proceeding and (2) the relationship of the proceeding to the patent.
 

 Affidavits or declarations or other written evidence relating to the
 submitted documents may accompany the 37 CFR 1.501 submission to explain the
 contents or pertinent dates in more detail. A commercial success affidavit tied in with a
 particular 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 patent 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 under 37 CFR 1.501 .
 

 A submission under 37 CFR 1.501 is limited to patents,
 printed publications, or patent owner written statements, accompanying information and an
 explanation of the pertinency and the manner of applying them. This may include an
 explanation by the patent owner as to how the claims differ from the prior art patents or
 printed publications or written claim scope statements and accompanying information. It may
 also include affidavits and declarations. The submission cannot include any issue which is
 not directed to patents, printed publications or written claim scope statements and
 accompanying information. Thus, for example, a submission 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. The submission must be
 directed to patents, printed publications and/or written claim scope statements and
 accompanying information and cannot discuss what the patent owner did, or failed to do,
 with respect to submitting and/or describing patents and printed publications during
 examination, because that would be a statement as to the conduct of the patent owner. The
 submission also should not contain argument and discussion of references previously treated
 in the prosecution of the application which matured into the patent or references
 previously treated in a reexamination proceeding as to the patent.
 

 If the submission contains any issue not directed to patents, printed
 publications or patent owner written claim scope statements, it should not be entered into
 the patent file, despite the fact that it may otherwise contain a complete submission of
 patents, printed publications and/or written statements and accompanying information with
 an explanation of the pertinency and manner of applying them. Rather, the submission should
 be returned to the sender, discarded, or closed as described in MPEP § 2206 .
 

 Examples of letters submitting prior art under 37 CFR 1.501 via
 either mail or hand-delivery follow. (In these examples, it is assumed that the application
 that matured into U.S. Patent No. 99,999,999 was examined under the first-inventor-to-file
 prior art regime. See, e.g., MPEP § 2258 , subsection I. Also, see MPEP § 2206 for
 information regarding citing prior art or written statements via the USPTO patent
 electronic filing system.)
 

 EXAMPLE I Submission by a third party: 

 
 
 
 
 IN THE UNITED STATES PATENT AND TRADEMARK
 OFFICE
 
 

 
 In re patent of Joseph Smith Patent No.
 99,999,999 Issued: July 7, 2020 For: Cutting Tool
 
 

 
 Submission of Prior Art Under 37 CFR
 1.501
 
 

 
 Mail Stop Post
 Issue
 
 

 
 Commissioner for Patents P.O. Box 1450
 Alexandria, VA 22313-1450
 
 

 
 
 
 
 
 
 Hon. Commissioner: 
 

 
 The undersigned herewith submits in the
 above-identified patent the following prior art (including copies thereof)
 which is pertinent and applicable to the patent and is believed to have a
 bearing on the patentability of at least claims 1 – 3 thereof:
 
 

 
 Weid et al. U.S. 2,585,416 April 15, 1933;
 McGee U.S. 2,722,794 May 1, 1934; Paulk et al. U.S. 3,625,291 June 16,
 1936
 
 

 
 Each of the references discloses a cutting
 tool strikingly similar to the device of Smith in having pivotal handles
 with cutting blades and a pair of dies. It is believed that each of the
 references has a bearing on the patentability of claims 1 – 3 of the Smith
 patent.
 
 

 
 Insofar as claims 1 and 2 are concerned,
 each of the references anticipates the claimed subject matter under 35
 U.S.C. 102. See Figure 2 and column 2 lines 20-45 of Weid et al., Figure 4
 and column 3 lines 10-35 of Paulk et al., and Figure 2 and column 2 lines
 12-25 of McGee.
 
 

 
 As to claim 3, only Weid et al. is a
 relevant primary reference, and the differences between the subject matter
 of this claim and the cutting tool of Weid et al. are shown in the device of
 Paulk et al. Further, Weid et al. suggests that different cutting blades can
 be used in their device. A person of ordinary skill in the art before the
 effective filing date of the claimed invention would have been led by the
 suggestion of Weid et al. to the cutting blades of Paulk et al. as obvious
 substitutes for the blades of Weid et al.
 
 

 
 Respectfully submitted, (Signed) 
 

 
 
 
 
 
 
 Certificate of Service 
 

 
 I hereby certify on this first day of June
 2023, that a true and correct copy of the foregoing “Submission of Prior
 Art” was mailed by first-class mail, postage paid, to:
 
 

 
 John Roe, 555 Any Lane Anytown, VA
 22202
 
 

 
 (Signed) 
 

 
 /John Jones/ 
 

 
 
 

 EXAMPLE II Submission by the patent owner:

 
 
 
 
 IN THE UNITED STATES PATENT AND TRADEMARK
 OFFICE
 
 

 
 In re patent of Joseph Smith Patent No.
 99,999,999 Issued: July 7, 2020 For: Cutting Tool
 
 

 
 Submission of Prior Art Under 37 CFR
 1.501
 
 

 
 Mail Stop Post
 Issue
 
 

 
 Commissioner for Patents P.O. Box 1450
 Alexandria, VA 22313-1450
 
 

 
 Hon. Commissioner: The undersigned herewith
 submits in the above-identified patent the following prior art (including
 copies thereof) which is pertinent and applicable to the patent and is
 believed to have a bearing on the patentability of at least claims 1-3
 thereof:
 
 

 
 
 
 
 
 
 Weid et al. U.S. 2,585,416 April 15, 1933;
 McGee U.S. 2,722,794 May 1, 1934; Paulk et al. U.S. 3,625,291 June 16,
 1936
 
 

 
 Each of the references discloses a cutting
 tool strikingly similar to the device of Smith in having pivotal handles
 with cutting blades and a pair of dies. See Figure 2 and column 2 lines
 20-45 of Weid et al., Figure 4 and column 3 lines 10-35 of Paulk et al., and
 Figure 2 and column 2 lines 12-25 of McGee; limitations (a) – (c) and (e) of
 Smith claim 1 are visible in the figures, and are described in the
 disclosures. While it is believed that each of the references has a bearing
 on the patentability of claims 1 – 3 of the Smith patent, the subject matter
 claimed differs from the references and is believed patentable
 thereover.
 
 

 
 Insofar as claims 1 and 2 are concerned,
 none of the references show the particular die (limitation (d) of Smith
 claim 1) claimed and the structure of these claimed dies would not have been
 obvious to a person of ordinary skill in the art before the effective filing
 date of the claimed invention. 
 
 

 
 
 
 
 
 
 As to claim 3, only Weid et al. is a
 relevant primary reference, and the cutting blades required by claim 3 are
 shown in Paulk et al.; however, the remainder of the claimed structure is
 found only in Weid et al. A person of ordinary skill in the art before the
 effective filing date of the claimed invention would not have found it
 obvious to substitute the cutting blades of Paulk et al. for those of Weid
 et al. In fact, the disclosure of Weid et al. would lead a person of
 ordinary skill in the art away from the use of cutting blades such as shown
 in Paulk et al.
 
 

 
 
 

 
 Respectfully submitted, 
 

 
 (Signed) John Doe Attorney for Patent Owner
 Reg. No. 29760
 
 

 
 
 

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 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