MPEP § 2278 — MPEP § 2278
Current through: 2022-07-01

2278-Action Following Decision 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2278 
 

 
 
 
 
 
 2278 Action Following Decision [R-08.2017]

 MPEP §
 1214 through § 1214.07 provide the procedures to be
 followed after the conclusion of the appeal to the Board, for both patent applications and
 ex parte reexamination proceedings, except as provided for in this
 Chapter.
 

 Claims indicated as allowable but objected to prior to
 appeal because of their dependency from rejected new or amended claims will be treated as
 if they were rejected. In other words, dependent claims with allowable subject matter but
 based on rejected new or amended claims would be “objected to” in the same manner as in
 applications and handled in a similar manner as discussed in MPEP § 1214.06 . However,
 allowable dependent claims based on an unamended patent claim that has been rejected,
 canceled, or otherwise not subject to reexamination should not be objected to or rejected
 because of its dependency. See MPEP § 2260.01 and subsection II below. 
 

 I. EXAMINER SUSTAINED IN WHOLE OR IN PART - NO CLAIMS STAND
 ALLOWED The following examples illustrate the appropriate
 approach to be taken by the examiner in various situations in a reexamination proceeding
 assuming no further appeal has been filed and the time period for filing a further
 appeal has expired: 
 

 
 (A) Example 1 : Amended claim 1
 is rejected in the examiner’s answer and claim 2 was objected to prior to appeal
 as being allowable except for its dependency from amended claim 1. If the Board
 affirms a rejection of amended patent claim 1, the examiner should prepare a
 “Notice of Intent to Issue Ex Parte Reexamination Certificate”
 (NIRC) indicating that claims 1 and 2 are canceled. 
 

 (B) Example 2 : All claims are
 rejected in the examiner’s answer. If the Board affirms a rejection against a new
 or amended independent claim and reverses all rejections against a claim dependent
 thereon, after expiration of the period for further appeal, the examiner should
 proceed in one of two ways: 
 
 (1) Convert the dependent claim into independent
 form by examiner’s amendment, cancel all claims in which the rejection was
 affirmed, and prepare the NIRC as appropriate; or 
 

 (2) Set a 1-month time limit in which appellant
 may rewrite the dependent claim(s) in independent form. Extensions of time
 under 37
 CFR 1.550(c) will not be permitted. If no timely reply
 is received, the examiner will prepare the NIRC indicating all claims are
 canceled, because no claims stand allowed. 
 

 
 

 II. EXAMINER SUSTAINED IN WHOLE OR IN PART - CLAIMS STAND
 ALLOWED The appellant is not required to file a reply, and the examiner prepares the NIRC
 indicating which the claims stand allowed and which claims are canceled. It is not
 necessary for the patent owner to cancel the rejected claims because they may be
 canceled by an examiner’s amendment. The following examples illustrate the appropriate
 approach to be taken by the examiner in various situations in a reexamination proceeding
 assuming no further appeal has been filed and the time period for filing a further
 appeal has expired:
 

 
 (A) Example 1 : Amended claim 1 is rejected in the examiner’s
 answer, claim 2 was objected to prior to appeal as being allowable except for its
 dependency from amended claim 1, and independent claim 3 was allowed prior to the
 appeal. If the Board affirms a rejection of amended claim 1, the examiner should
 issue the NIRC with claims 1 and 2 as canceled and claim 3 as confirmed or
 patentable. 
 

 (B) Example 2 : Amended claim 1 and its dependent claim 2 are
 rejected in the examiner’s answer and independent claim 3 was allowed prior to the
 appeal. If the Board affirms a rejection against amended independent claim 1, and
 reverses all rejections against dependent claim 2, the examiner should either: 
 
 (1) Convert dependent claim 2 into independent form by examiner’s amendment,
 cancel claim 1 in which the rejection was affirmed, and issue the NIRC
 indicating claims 2 and 3 as patentable and claim 1 as canceled; or 
 

 (2) Set a 1-month time limit in which appellant may rewrite dependent claim 2 in
 independent form. Extensions of time under 37 CFR
 1.550(c) will not be permitted. If no timely reply is
 received, the examiner will cancel claims 1 and 2 and issue the NIRC
 indicating only claim 3 as patentable. 
 

 
 

 (C) Example 3 : Unamended patent claim 1 is rejected in the
 examiner’s answer, claim 2 was objected to prior to appeal as being allowable
 except for its dependency from unamended patent claim 1 and independent claim 3
 was allowed prior to the appeal. Dependent claim 2 may be either unamended or
 amended. If the Board affirms a rejection of unamended patent claim 1, the
 examiner should issue the NIRC with claim 1 as canceled and claims 2 and 3 as
 confirmed or patentable. 
 

 (D) Example 4 : Unamended patent
 claim 1 and dependent claim 2 are rejected in the examiner’s answer. Dependent
 claim 2 may be either unamended or amended. If the Board affirms a rejection of
 unamended patent claim 1 and reverses the rejection of dependent claim 2, the
 examiner should prepare the NIRC indicating that claim 1 is canceled and claim 2
 is allowed. 
 

 
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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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 Last Modified: 
 
 03/09/2026 20:49:35