2643 Claims Considered in Deciding Request [R-11.2013]
The claims of the patent in effect at the time of the determination will be the basis for deciding whether “a substantial new question of patentability” or "a reasonable likelihood that the requester will prevail" is present. 37 CFR 1.923. The Office’s determination in both the order for reexamination and the examination stage of the reexamination will generally be limited solely to a review of the claim(s) for which reexamination was requested. If a requester seeks to have all of the claims in a patent reexamined, the requester has the opportunity to include them in its request for reexamination. However, if the requester chooses not to include all claims, the claim(s) for which reexamination was not requested will generally not be reexamined by the Office. Further, 35 U.S.C. 311(b)(2) requires that a requester “set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested.” If requester fails to apply the art to certain claims, requester is not statutorily entitled to reexamination of such claims. If a request fails to set forth the pertinency and manner of applying the cited art to any claim for which reexamination is requested as required by 37 CFR 1.915(b), that claim will generally not be reexamined. The decision to reexamine any claim for which reexamination has not been requested lies within the sole discretion of the Office, to be exercised based on the individual facts and situation of each individual case. If the Office chooses to reexamine any claim for which reexamination has not been requested, it is permitted to do so, since the Office may always initiate a reexamination on its own initiative of the non-requested claim (35 U.S.C. 303(a)). Thus, while the examiner ordinarily concentrates on the claims for which reexamination is requested, the finding of “a substantial new question of patentability” or "a reasonable likelihood that the requester will prevail" can be based upon a claim of the patent other than the ones for which reexamination is requested. For example, the request might seek reexamination of particular claims only (i.e., claims 1-4), but the examiner is not limited to those claims. The examiner can make a determination that "a substantial new question of patentability" or "a reasonable likelihood that the requester will prevail" is present as to other claims in the patent (i.e., claims 5-7), without necessarily finding "a substantial new question" or "a reasonable likelihood that the requester will prevail" with regard to the claims requested (i.e., claims 1-4).
The decision on the request for reexamination should discuss all of the patent claims requested for reexamination. The examiner should limit the discussion of those claims in the order for reexamination as to whether a substantial new question of patentability has been raised or "a reasonable likelihood that the requester will prevail" is present.
MPEP § 2642 discusses patent claims which have been the subject of a prior decision.
Amendments and/or new claims present in any copending reexamination or reissue proceeding for the patent to be reexamined will not (see MPEP § 2640, subsection II.(A)) be considered nor commented upon when deciding a request for reexamination. Where a request for reexamination is granted and reexamination is ordered, the first Office action (which ordinarily accompanies the order) and any subsequent reexamination prosecution should be on the basis of the claims as amended by any copending reexamination or reissue proceeding.