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1445    Reissue Application Examined in Same Manner as Original Application [R-11.2013]

As stated in 37 CFR 1.176, a reissue application, including all the claims therein, is subject to “be examined in the same manner as a non-reissue, non-provisional application.” Even in rare cases where, because of an amendment to the claims, the prior art available under 35 U.S.C. 102 and 103 during examination of the reissue application differs from that applied to the original application (see discussion in MPEP § 1440), the overall examination of the reissue application is conducted in the same manner as was the parent. Accordingly, the claims in a reissue application are subject to any and all rejections which the examiner deems appropriate. It does not matter whether the claims are identical to those of the patent or changed from those in the patent. It also does not matter that a rejection was not made in the prosecution of the patent, or could have been made, or was in fact made and dropped during prosecution of the patent; the prior action in the prosecution of the patent does not prevent that rejection from being made in the reissue application. Claims in a reissue application enjoy no “presumption of validity.” In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232-233 (CCPA 1973); In re Sneed, 710 F.2d 1544, 1550 n.4, 218 USPQ 385, 389 n.4 (Fed. Cir. 1983). Likewise, the fact that during prosecution of the patent the examiner considered, may have considered, or should have considered information such as, for example, a specific prior art document, does not have any bearing on, or prevent, its use as prior art during prosecution of the reissue application.

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Last Modified: 03/27/2014 10:10:33