MPEP § 2287 — MPEP § 2287
Current through: 2022-07-01

2287-Conclusion of Ex Parte Reexamination Proceeding 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2287 
 

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

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

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

 A panel review conference is not to be held as to any claim that was in
 the case (proceeding) at the time the case was reviewed by the Board or a federal court.
 The following example will serve to illustrate this point. In a reexamination proceeding,
 claims 5-10 are allowed by the examiner, and claims 1-4 are rejected. The rejection of
 claims 1-4 is then appealed to the Board. The Board reverses the rejection of claims 1-4
 and imposes a new ground of rejection of claims 1-4 under 37 CFR 41.50(b) . The
 patent owner then elects further prosecution before the examiner pursuant to
 37 CFR
 41.50(b)(1) and submits an amended set of claims 1-4. The examiner
 finds amended claims 1-4 to be allowable and wishes to “allow” the entire case by issuing a
 NIRC. A panel review conference must be held at this stage of the proceeding. The conferees
 will review the allowance of amended claims 1-4. The conferees will not, however, review
 the allowance of claims 5-10, because claims 5-10 were in the case, and before the Board at
 the time the Board decided the appeal.
 

 A panel review conference is not to be held where the proceeding is to be
 concluded by the cancellation of all claims. No panel review conference is needed in this
 instance, as the issuance of the NIRC is essentially ministerial.
 

 Thus, a panel review conference must be held in each instance
 where a NIRC is about to be issued, unless the NIRC is being issued: (A) following and
 consistent with a decision by the Board (or court) on the merits of the proceeding; or (B)
 as a consequence of the patent owner’s failure to respond or take other action where such a
 response or action is necessary to maintain pendency of the proceeding and, as a result of
 which failure to respond, all of the claims will be canceled. 
 

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

 If all of the claims are disclaimed in a patent under reexamination, a
 certificate under 37 CFR
 1.570 will be issued indicating that fact.
 

 I. PREPARATION OF THE CASE FOR PUBLICATION In preparing the reexamination file for publication of the certificate,
 the examiner must review the reexamination and patent files (IFW and paper files) to be
 sure that all the appropriate parts are completed. The review should include completion
 of the following items:
 

 
 (A) The IFW file wrapper Search Notes form — The “SEARCHED” and the
 “SEARCH NOTES” boxes are to be filled in with the classes and subclasses that were
 actually searched and other areas consulted. See MPEP §
 719.05 .
 

 (B) The IFW file jacket form — Check to be sure that the necessary
 data is included thereon, such as the certificate number, e.g., “C1” or “C2”. The
 “Litigation Review” and “Copending Office Proceedings” boxes should be completed
 to ensure that the Office is aware of prior or concurrent litigation and Office
 proceedings.
 

 (C) The Bibliographic Data Sheet — Check to be sure that the data
 included thereon is correct and the blank spaces have been initialed.
 

 (D) The Issue Classification IFW form — The form must be completed to
 set forth the status of each claim and the final claim numbers. The appropriate
 information must be included in the “Issue Classification” boxes. The examiner
 should enter the classification in the Issue Classification boxes that corresponds
 to the current classification of the patent and any additional classification
 based on newly claimed subject matter. See MPEP § 903.07 . The current
 classification of the patent may be found by viewing the patent in PE2E SEARCH,
 the automated search tool. See MPEP § 902.03(e) . Completion of
 the Issue Classification boxes is required, even if all of the claims are
 canceled.
 
 

 

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

 

 
 
 (A) The broadest claim should be selected;

 (B) Examiners should ordinarily designate but one claim on each
 invention, although when a plurality of inventions are claimed in one application,
 additional claims up to a maximum of five may be designated for publication. In
 the case of reexamination, the examiner must select only one claim; 
 

 (C) A dependent claim should not be selected unless the independent
 claim from which it depends is also printed. In the case where a multiple
 dependent claim is selected, the entire chain of claims for one embodiment should
 be listed. In the case of reexamination, a dependent patent claim may be selected
 where the independent original patent claim has been canceled; in such a case, the
 dependent claim would be printed while the independent claim would not be printed;
 and 
 

 (D) In reissue applications, the broadest claim with changes or the
 broadest additional reissue claim should be selected for printing. 
 

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

 
 (A) Enter the claim number clearly; 

 (B) If multiple claims are selected, the claim numbers should be
 separated by commas; and 
 

 (C) The claim designated must be referred to by using the renumbered
 patent claim number rather than the original claim number if different.
 

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

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

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

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

 
 (A) the title;

 (B) the inventor;

 (C) the assignee;

 (D) the continuing data;

 (E) the foreign priority;

 (F) the address of the owner’s attorney; and

 (G) the requester’s address 

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

 II. REEXAMINATION PROCEEDINGS IN WHICH ALL THE CLAIMS ARE CANCELED There will be instances where all claims in the reexamination
 proceeding are to be canceled, and a NIRC will be issued indicating that fact. This
 would occur where the patent owner fails to timely respond to an Office action, and all
 live claims in the reexamination proceeding are under rejection. It would also occur
 where all live claims in the reexamination proceeding are to be canceled as a result of
 a Board decision affirming the examiner, and the time for appeal to the court and for
 requesting reconsideration or modification has expired.
 

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

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

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

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

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

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

 III. HANDLING OF MULTIPLE DEPENDENT CLAIMS The following discussion provides guidance on how to treat multiple
 dependent claims when preparing a reexamination proceeding for publication of the
 reexamination certificate.
 

 Assume Patent X issues with the following claims:

 Patent claims:

 
 1. A method of sintering a particulate ceramic preform, comprising
 heating it above 500 degrees F, cooling it to 100 degrees F, and repeating the
 heating and cooling steps six times. 
 

 2. The method of claim 1, where a pressure of 300 - 400 psi is
 applied during the heating steps.
 

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

 4. The method of claim 3, where the pressure applied during the
 heating steps is 360 - 365 psi.
 

 5. The method of claim 1, where the preform contains lithium and
 magnesium oxides.
 

 6. The method of claim 5, where the preform contains sodium
 fluoride.
 

 7. The method of claim 1 or claim 5, where the sintered preform is
 machined into a lens.
 

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

 In reexamination:

 
 1. (Text Unchanged) A method of sintering a particulate ceramic
 preform, comprising heating it above 500 degrees F, cooling it to 100 degrees F,
 and repeating the heating and cooling steps six times.
 

 2. (Amended) The method of claim 1 or claim
 8 , where a pressure of 300 - 400 psi is applied during the heating
 steps.
 

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

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

 5. (Text Unchanged) The method of claim 1, where the preform
 contains lithium and magnesium oxides.
 

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

 7. (Text Unchanged) The method of claim 1 or claim 5, where the
 sintered preform is machined into a lens.
 

 8. (New) A method of sintering a particulate fluoride ceramic preform
 comprising heating it above 500 degrees F, cooling it to 100 degrees F, and
 repeating the heating and cooling steps six times. 

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

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

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

 Patent claims amended: 3, 4/3

 Patent claims canceled: 3/1, 6/5

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

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

 7. Patent claims confirmed: 1, 5, 7

 11. Patent claims canceled: None

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

 13. Patent claims dependent on amended: None

 14. New claims patentable: 8

 Looking at claim 2: 

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

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

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

 Looking at claim 3: 

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

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

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

 Looking at claim 4: 

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

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

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

 Looking at claim 6: 

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

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

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

 Looking at claim 7: 

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

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

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

 
 (A) All patent claims for which a substantial new question of
 patentability has been found must have been examined. See MPEP
 § 2243 .
 

 (B) No renumbering of patent claims is permitted. New claims may
 require renumbering. See MPEP § 2250 .
 

 (C) All amendments to the description and claims must conform to
 requirements of 37 CFR 1.530(d)-(j) . This includes any changes made by
 Examiner’s Amendment. If a portion of the text is amended more than once, each
 amendment should indicate all of the changes (insertions
 and deletions) in relation to the current text in the
 patent under reexamination. See MPEP § 2250 .
 

 (D) The prior art must be listed on a form PTO 892, PTO/SB/08, or
 PTO/SB/42 (or on a form having a format equivalent to one of these forms). These
 forms must be properly completed. See MPEP § 2257 .
 

 (E) The examiner and reexamination clerk checklists PTO-1516 and
 PTO-1517 must be entirely and properly 
 completed. A careful reading of the instructions contained in these checklists is
 essential. The clerical checklist is designed as a check and review of the
 examiner’s responses on the examiner checklist. Accordingly, the CRU support staff
 should personally review the file before completing an item. The CRU support staff
 should check to make certain that the responses to all related items on both
 checklists are in agreement.
 

 (F) Multiple pending reexamination proceedings are often merged. See
 MPEP §
 2283 .
 

 (G) Where the reexamination proceeding is copending with an
 application for reissue of the patent being reexamined, the files must have been
 forwarded to the Office of Patent Legal Administration (OPLA) for a consideration
 of potential merger, with a decision (by a Senior Legal Advisor) on the question
 being present in the reexamination file. See MPEP §
 2285 .
 

 (H) Reasons for patentability and/or confirmation are required for
 each claim found patentable. See below.
 

 (I) There is no issue fee in reexamination. See MPEP §
 2233 .
 

 (J) The patent claims may not be amended nor new claims added after
 expiration of the patent. See MPEP § 2250 .
 

 (K) Original drawings cannot be physically changed. “Amended” or
 “New” figures must be appropriately labeled as such and presented on new sheets in
 compliance with 37 CFR 1.84 . See 37 CFR 1.530(d)(3) and
 MPEP §
 2250.01 .
 

 (L) An amended or new claim may not enlarge the scope of the patent
 claims. See MPEP §
 2250 .
 

 (M) If the patent has expired, all amendments to the patent claims
 and all claims added during the proceeding must be withdrawn. Further, all
 presently rejected and objected-to claims are canceled by examiner’s amendment.
 See MPEP §
 2250 , subsection III, Amendment after the Patent Has
 Expired.
 

 V. EXAMINER’S AMENDMENT Where it is necessary to amend the patent in order to place the
 proceeding in condition to issuance of a reexamination certificate, the examiner may
 request that the patent owner provide the amendment(s), or the examiner may make the
 amendments, with the patent owner’s approval, by an examiner’s amendment. If the changes
 are made by an examiner’s amendment, the examiner’s amendment must comply with the
 requirements of 37 CFR
 1.530(d) - (j) in amending the patent. Thus,
 the examiner’s amendment requires presentation of the full text of any paragraph or
 claim to be changed, with the 37 CFR 1.530(f) markings. The
 exception for examiner’s amendments set forth in 37 CFR 1.121(g) does
 not apply to examiner’s amendments in reexamination
 proceedings. See MPEP §
 2250 . The only exception to the full text
 presentation requirement is that an entire claim or an entire paragraph of specification
 may be deleted from the patent by a statement deleting the claim or paragraph without
 the presentation of the text of the claim or paragraph.
 

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

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

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

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

 ¶ 22.06 Examiner’s Amendment Accompanying Notice of Intent To Issue Ex Parte Reexamination Certificate

 An examiner’s amendment to the record appears below. The changes made by this examiner’s amendment will be reflected in the
 reexamination certificate to issue in due course. 
 

 [1] 

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

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

 ¶ 22.16 Reasons For Patentability and/or Confirmation

 STATEMENT OF REASONS FOR PATENTABILITY AND/OR CONFIRMATION 

 The following is an examiner’s statement of reasons for patentability and/or confirmation of the claims found patentable in
 this reexamination proceeding: [1] 

 Any comments considered necessary by PATENT OWNER regarding the above statement must be submitted promptly to avoid processing
 delays. Such submission by the patent owner should be labeled: “Comments on Statement of Reasons for Patentability and/or
 Confirmation” and will be placed in the reexamination file.
 

 Examiner Note:

 This form paragraph may be used as an attachment to the Notice of Intent to Issue Ex Parte Reexamination Certificate, PTOL-469 (item number 2).
 

 

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

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

 
 2287.01 Examiner Consideration of Submissions After a NIRC [R-07.2015]

 The rules do not provide for an amendment to be filed in a
 reexamination proceeding after a Notice of Intent to Issue Ex Parte 
 Reexamination Certificate (NIRC) has been issued. Note that 37 CFR 1.312 does
 not apply in a reexamination proceeding. Any amendment, information disclosure
 statement, or other paper related to the merits of the reexamination proceeding filed
 after the NIRC must be accompanied by a petition under 37 CFR 1.182 . The
 petition must be granted, in order to have the amendment, information disclosure
 statement, or other paper related to the merits considered. Where an amendment,
 information disclosure statement, or other paper related to the merits of the
 reexamination proceeding is filed after the NIRC, and the accompanying petition under
 37 CFR
 1.182 is granted, the examiner will reconsider the case in view of
 the new information, and if appropriate, will reopen prosecution. See
 MPEP §
 2256 for a detailed discussion of the criteria for obtaining
 entry and consideration of an information disclosure statement filed after a NIRC.
 

 Any “Comments on Statement of Reasons for Patentability and/or
 Confirmation” which are received will be placed in the reexamination file, without
 comment. This will be done even when the reexamination certificate has already
 issued.
 

 

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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 20:49:35