MPEP § 2247 — MPEP § 2247
Current through: 2022-07-01

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

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2247 
 

 
 
 
 
 
 2247 Decision under 35 U.S.C. 303 on Request for Reexamination filed
 Under 35 U.S.C. 302, Request Denied [R-07.2022]
 

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

 If the examiner concludes that no substantial new question of
 patentability has been raised, the examiner should prepare a decision denying the
 reexamination request. Form paragraph 22.02 should be used as the introductory
 paragraph in a decision denying reexamination.
 

 ¶ 22.02 No New Question of Patentability

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

 

 The decision denying the request will then indicate, for each patent and
 printed publication cited in the request, why the citation is:
 

 
 (A) Cumulative to the teachings of the art cited in the earlier
 concluded examination or review of the patent, or raised to or by the Office in a
 pending reexamination or supplemental examination of the patent;
 

 (B) Not available against the claims (e.g., the reference is not
 available as prior art because of its date or the reference is not a
 publication);
 

 (C) Not important to a reasonable examiner in deciding whether any claim
 of the patent for which reexamination is requested is patentable, even though the
 citation is not cumulative and the citation is available against the claim; or
 

 (D) One which was cited in the record of the patent and is barred by the
 guidelines set forth in MPEP § 2242 , subsection II. A.
 

 
 The examiner should also, in the decision respond to the substance of each
 argument raised by the requester which is based on patents or printed publications. If
 arguments are presented as to grounds not based on prior art patents or printed
 publications, such as those based on public use or on sale under 35 U.S.C. 102(b) , or
 abandonment under 35 U.S.C. 102(c) for reexamination proceedings examined under the
 first-to-invent prior art regime, the examiner should note that such grounds are improper
 for reexamination and are not considered or commented upon. See 37 CFR 1.552(c) .
 

 See MPEP §
 2247.01 for an example of a decision denying a request for
 reexamination. The example in MPEP § 2247.01 is drafted for the case
 where the “request indicates that Requester considers that Claims 1-2 are unpatentable over
 Smith taken with Jones.” There may, however, be a request that does not indicate the claims to be unpatentable over the art , but rather that a substantial new question of patentability is raised by the art.
 This may occur, for example, in a patent owner request filed to address prior art that
 raises a substantial new question of patentability but the claims are still patentable over
 the art. In such an instance , the decision on the request should not state that the “request indicates that
 Requester considers that Claims 1-2 are unpatentable over Smith taken with Jones.” Rather,
 it should state that the “request indicates that Requester considers that a substantial new
 question of patentability is raised as to Claims 1-2 based on Smith taken with Jones.”
 

 The decision denying a request for reexamination is processed for mailing
 by the Central Reexamination Unit (CRU), and the CRU will allow time for a petition seeking
 review of the examiner’s determination refusing reexamination. If such a petition is not
 filed within one (1) month of the examiner’s determination denying reexamination, the CRU
 then processes the reexamination file to provide the partial refund set forth in
 37 CFR
 1.26(c) (the Office of Finance no longer processes reexamination
 proceedings for a refund). The reexamination proceeding is then given a 420 status. A copy
 of the Patent Data Portal (PDP) “Application Number Information” screen and the “Contents”
 screen is printed, the printed copy is annotated by adding the comment “PROCEEDING
 CONCLUDED,” and the annotated copy is then scanned into IFW using the miscellaneous letter
 document code.
 

 The concluded reexamination file (electronic or paper) containing the
 request and the decision denying the request becomes part of the patent’s record.
 

 PROCESS OF PREPARING THE DECISION DENYING THE REQUEST If the examiner’s position is to deny reexamination, the examiner will
 prepare for and set up a panel review conference as per MPEP § 2271.01 , to
 discuss the issuance of a decision denying reexamination. The examiner may prepare the
 decision after the conference, or may prepare the decision and revise it as needed after
 the conference.
 

 The conference will be conducted. If the conference
 confirms the examiner’s preliminary decision not to grant reexamination, the decision
 denying reexamination will be completed and signed by the examiner, with the two or more
 other conferees initialing the action (as “conferee”) to indicate their presence in the
 conference. A transmittal form PTOL-465 with the third party requester’s address will be
 completed, if a copy for mailing is not already available. The transmittal form PTOL-465
 is used to forward the decision to the third party requester. The use of this form
 removes the need to retype the third party requester’s address each time a mailing is
 required. In conjunction with the mailing, any appropriate processing (e.g., content
 entry into the Office monitoring system, update scanning) is carried out by the staff of
 the CRU. 
 

 
 2247.01 Examples of Decisions on Request for Reexamination [R-11.2013]

 Examples of decisions on requests for ex parte 
 reexamination are provided below. The first example is a grant of
 an ex parte reexamination. The second example is a
 denial of an ex parte reexamination. The
 examiner should leave the paper number blank since IFW files do not have a paper
 number.
 

 Example (1): Decision Granting Request for
 Reexamination 

 

 
 
 
 
 
 

 
 
 Example (2): Decision Denying Request for
 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 20:49:34