MPEP § 2217 — MPEP § 2217
Current through: 2022-07-01

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

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2217 
 

 
 
 
 
 
 2217 Statement Applying Prior Art in a Request Filed under 35 U.S.C.
 302 [R-07.2015]
 

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

 The prior art applied may only consist of prior art patents or printed
 publications. 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, and any statement in the request
 applying the prior art must reflect that.
 

 With respect to the first-inventor-to-file prior art regime,
 substantial new questions of patentability 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,
 substantial new questions of patentability may be based upon the following portions of
 35 U.S.C.
 102 (in effect on March 15, 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. ...”
 

 
 Substantial new questions of patentability may also be presented under
 35 U.S.C.
 103 which are based on the above indicated portions of
 35 U.S.C.
 102 . 
 

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

 The statement applying the prior art may, where appropriate, point out
 that claims in the patent for which reexamination is requested are entitled only to the
 filing date of the patent and are not supported by an earlier foreign or United States
 patent application whose filing date is claimed. For example, the effective date of some of
 the claims in a patent which resulted from a continuing application under 35 U.S.C. 120 
 could be the filing date of the continuing application since those claims were not
 supported in the parent application. Therefore, intervening patents or printed publications
 are available as prior art. See In re Ruscetta, 255 F.2d 687, 118 USPQ
 101 (CCPA 1958), In re van Langenhoven, 458 F.2d 132, 173 USPQ 426 (CCPA
 1972). See also MPEP § 211.05 .
 

 Typically, substantial new questions of patentability in a reexamination
 proceeding filed under 35
 U.S.C. 302 are based on “prior art” patents and publications. There
 are exceptions, however. 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 MPEP §
 2258 . 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:
 

 
 I. EXPLANATION MUST BE COMPLETE The mere citation of new patents or printed publications without an
 explanation does not comply with 37 CFR 1.510(b)(2) . Requester must
 present an explanation of how the cited patents or printed publications are applied to
 all claims which requester considers to merit reexamination. This not only sets forth
 the requester’s position to the Office, but also to the patent owner (where the patent
 owner is not the requester). A request for reexamination, including the citation form
 (form on which the references are listed), must not include citations to background
 references or other references which are not used to support a SNQ or proposed rejection
 of the claims, and explained in the request as to providing such support. Without
 explanation for each of the references the request seeks to make of record, the request
 lacks the requisite “detailed explanation of the pertinency and manner of applying the
 cited prior art to every claim for which reexamination is requested.” 
 

 Thus, for example, once the request has cited documents (patents and
 printed publications) and proposed combinations of the documents as to patent claims
 1-10 (for example), the request must explain how each of the proposed combinations
 specifically applies to each claim that it is asserted against (i.e., claims 1 – 10),
 explaining how each document (reference) identified for the combination is used.
 

 Ideally, the required explanation can be provided using an
 appropriately detailed claim chart that compares, limitation by limitation, each claim
 for which reexamination is requested with the relevant teachings of each reference cited
 in the request. See the sample request for reexamination in MPEP § 2214 .
 

 For proposed obviousness rejections, requester must provide
 at least one basis for combining the cited references, and a statement of why the
 claim(s) under reexamination would have been obvious over the proposed reference
 combination. Preferably, the requester should quote the pertinent teachings in the
 reference, referencing each quote by page, column and line number and any relevant
 figure numbers. The explanation must not lump together the proposed
 rejections or proposed combinations of references. 
 

 
 Examples of inappropriate language:

 - Claim 1 is unpatentable under 35 U.S.C.
 102 as being anticipated by, or in the
 alternative , under 35 U.S.C. 103 as being obvious
 over the Smith reference.
 

 - Claim 1 is unpatentable under 35 U.S.C. 103 as being obvious
 over Smith and/or Charles.
 

 - Claim 2 is unpatentable under 35 U.S.C. 103 as being obvious
 over Smith in view of Jones or Harvey. (This could however be used if
 both Jones and Harvey provide a minor teaching which can be articulated in a sentence
 or two.)
 

 - Claims 3 - 10 are unpatentable under 35 U.S.C. 103 
 as being obvious over Smith in view of either Jones and Cooper 
 or Harvey and Cooper.
 

 - Claims 3 - 10 are unpatentable under 35 U.S.C. 103 
 as being obvious over Smith in view of Harvey, taken alone or further in view
 of Cooper.
 

 

 
 Examples of appropriate language:

 - Claim 1 is unpatentable under 35 U.S.C.
 102 as being anticipated by Smith.
 

 - Claim 1 is unpatentable under 35 U.S.C. 103 as being obvious
 over Smith.
 

 - Claim 1 is unpatentable under 35 U.S.C. 103 as being obvious
 over Charles.
 

 - Claim 2 is unpatentable under 35 U.S.C. 103 as being obvious
 over Smith in view of Jones.
 

 - Claim 2 is unpatentable under 35 U.S.C. 103 as being obvious
 over Smith in view of Harvey.
 

 - Claims 3 - 10 are unpatentable under 35 U.S.C. 103 
 as being obvious over Smith in view of Jones, and further in view of Cooper.
 

 - Claims 3 - 10 are unpatentable under 35 U.S.C. 103 
 as being obvious over Smith in view of Harvey, and further in view of Cooper.
 

 

 Any failure to provide the required explanation for any document,
 combination, or claim will be identified in a “Notice of Failure to Comply with
 Ex Parte Reexamination Request Filing Requirements” (see
 MPEP §
 2227 ). If a requester receives such a notice that identifies
 one or more documents, combinations, or claims for which an explanation was not given,
 the requester has the option to respond by either:
 

 
 (A) providing a separate explanation for each combination, document,
 and claim identified in the notice as lacking explanation; or
 

 (B) explicitly withdrawing any document, combination, or claim for
 which reexamination was requested for which there is no explanation. Obviously,
 once this is done, requester need not provide an explanation for the withdrawn
 document, combination, or claim. Thus, for example, if the requester’s response to
 the notice explicitly withdraws the request as to claims 6-10, then the documents
 and their combinations need only be applied separately as to claims 1-5 of the
 patent. Likewise, if the requester’s response to the notice explicitly withdraws
 the Jones patent from the request, then no explanation is required as to the Jones
 reference, and all combinations advanced in the request that contained Jones are
 deemed to be withdrawn.
 

 
 Even if the request fails to comply with one of the above-identified
 requirements, the request may be accepted if it is readily understood from the
 explanation provided in the request as to how the cited patents or printed publications
 are applied to all claims which requester considers to merit reexamination. 
 

 II. AFFIDAVITS/DECLARATIONS/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. See MPEP § 2258 .
 

 III. ADMISSIONS The consideration under 35 U.S.C. 303 of a request for
 ex parte reexamination filed under 35 U.S.C. 302 is
 limited to prior art patents and printed publications. See Ex parte McGaughey, 6 USPQ2d 1334, 1337 (Bd. Pat. App. & Inter. 1988).
 Thus an admission, per se, may not be the basis for establishing a
 substantial new question of patentability. However, an admission by the patent owner of
 record in the file or in a court record may be utilized in combination with a patent or
 printed publication.
 

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

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

 Any admission submitted by the patent owner is proper. A third party,
 however, may not submit admissions of the patent owner made outside the record of the
 file or the court record, unless such admissions were entered into a court record. If an
 admission made outside the record of the file or the court record is entered into a
 court record and a copy thereof is then filed in a reexamination (as a copy of a paper
 filed in the court), such paper could be admitted pursuant to MPEP § 2282 ; however,
 such would not be given weight as an admission with respect to use in establishing a
 substantial new question of patentability, or as a basis in rejecting claims. Such a
 submission would be outside the scope of reexamination.
 

 [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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 Last Modified: 
 
 03/09/2026 20:50:43