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2647    Decision Denying Reexamination [R-11.2013]

The request for reexamination will be denied if a SNQ/RLP is not found based on patents or printed publications.

If the examiner concludes that no SNQ/RLP has been raised, the examiner should prepare a decision denying the reexamination request. Form paragraph 26.02 should be used as the introductory paragraph in a decision denying reexamination.

For a request filed prior to September 16, 2011, the following version was to be used:

Former26.02 No New Question of Patentability

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

For a request filed beginning September 16, 2011 and ending September 15, 2012, the following version is used:

¶ 26.02    No reasonable likelihood established

For the reasons set forth below, the present request for inter partes reexamination fails to establish a reasonable likelihood that requester will prevail with respect to at least one of the challenged claims of United States Patent Number [1].

The decision denying the request will then indicate, for each patent or publication cited in the request, why a SNQ/RLP has not been established by the request, for that citation.

The examiner should also, in the decision, respond to the substance of each argument raised by the third party 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), the examiner should note that such grounds are improper for reexamination and are not considered or commented upon. See 37 CFR 1.906(c).

See MPEP § 2647.01 for an example of a decision denying a request for inter partes reexamination which was filed prior to September 16, 2011 (when the SNQ standard was applied).

The decision denying the request is mailed by the Central Reexamination Unit (CRU), and the CRU will allow time for 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 in the Office's PALM system. A copy of the PALM “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 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 prepares for and sets up a panel review conference as per MPEP § 2671.03, to discuss the issuance of a decision denying reexamination. The examiner may prepare the decision after the conference, or may prepare the decision prior to the conference and revise it, as needed.

If the conference confirms the examiner’s preliminary decision not to grant reexamination, the decision denying reexamination is 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-501 with the third party requester’s address is completed, if a copy for mailing is not already available. The transmittal form PTOL-501 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.

2647.01   Examples of Decisions on Requests [R-11.2013]

Examples of decisions on requests for inter partes reexamination for requests filed prior to September 16, 2011 (when the SNQ standard was applied), are provided below. The first example is a grant of an inter partes reexamination. The second example is a denial of an inter partes reexamination. The examiner should leave the paper number blank, since IFW files do not have a paper number.

Example of a grant of an inter partes reexamination.
DECISION GRANTING INTER PARTES REEXAMINATION
A substantial new question of patentability affecting claims 1-3 of United States Patent Number 9,999,999 to Key is raised by the present request for inter partes reexamination.
Extensions of time under 37 CFR 1.136(a) will not be permitted in inter partes reexamination proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant" and not to parties in a reexamination proceeding. Additionally, 35 U.S.C. 314(c) requires that inter partes reexamination proceedings "will be conducted with special dispatch" (37 CFR 1.937). Patent owner extensions of time in inter partes reexamination proceedings are provided for in 37 CFR 1.956. Extensions of time are not available for third party requester comments, because a comment period of 30 days from service of patent owner’s response is set by statute. 35 U.S.C. 314(b)(3).
The patent owner is reminded of the continuing responsibility under 37 CFR 1.985(a), to apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving Patent 9,999,999 throughout the course of this reexamination proceeding. The third party requester is also reminded of the ability to similarly apprise the Office of any such activity or proceeding throughout the course of this reexamination proceeding. See MPEP § 2686 and 2686.04.
The request sets forth that the third party requester considers claims 1-3 of the Key patent to be unpatentable over Smith taken with Jones.
The request further sets forth that the requester considers claim 4 of the Key patent to be unpatentable over the Horn publication.
It is agreed that the consideration of Smith raises a substantial new question of patentability as to claims 1-3 of the Key patent. As pointed out on pages 2-3 of the request, Smith teaches using an extruder supported on springs at a 30 degree angle to the horizontal but does not teach the specific polymer of claims 1-3 which is extruded. The teaching as to spring-supporting the extruder at 30 degrees was not present in the prosecution of the application which became the Key patent. Further, there is a substantial likelihood that a reasonable examiner would consider this teaching important in deciding whether or not the claim is patentable. Accordingly, Smith raises a substantial new question of patentability as to claims 1-3, which question has not been raised in a previous examination of the Key patent.
The Horn publication does not raise a new question of patentability as to claim 4 because its teaching as to the extrusion die is a substantial equivalent of the teaching of the die by the Dorn patent which was considered in the prosecution of the application which became the Key patent. Further, the request does not present any other new question of patentability as to claim 4, and none has been found. Accordingly, claim 4 will not be reexamined.
Finally, reexamination has not been requested for claims 5 – 20 of the Key patent. Accordingly, claims 5 – 20 will not be reexamined.
Claims 1 – 3 of the Key patent will be reexamined.
All correspondence relating to this inter partes reexamination proceeding should be directed:
By EFS:

Registered users may submit via the electronic filing system EFS-Web, at

https://efs.uspto.gov/efile/myportal/efs-registered

By Mail to:

Mail Stop Inter Partes Reexam

Attn: Central Reexamination Unit

Commissioner for Patents

United States Patent & Trademark Office

P.O. Box 1450

Alexandria, VA 22313-1450

By FAX to:

(571) 273-9900

Central Reexamination Unit

By hand:

Customer Service Window

Randolph Building

401 Dulany Street

Alexandria, VA 22314

For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i) (C) and (ii) states that correspondence (except for a request for reexamination and a corrected or replacement request for reexamination) will be considered timely filed if (a) it is transmitted via the Office’s electronic filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a certificate of transmission for each piece of correspondence stating the date of transmission, which is prior to the expiration of the set period of time in the Office action.

Any inquiry concerning this communication or earlier communications from the examiner, or as to the status of this proceeding, should be directed to the Central Reexamination Unit at telephone number (571) 272-7705.

/John Doe/

John Doe

Primary Examiner

CRU Art Unit 3998

/ARI/

Conferee

/BZ/

Conferee

Example of an Order Granting/Denying Request for Inter Partes Reexamination
DECISION DENYING INTER PARTES REEXAMINATION
No substantial new question of patentability is raised by the present request for inter partes reexamination for the reasons set forth below
The request indicates that Requester considers that a substantial new question of patentability is raised as to claims 1-2 of the Key patent (Patent # 9,999,999) based on Smith taken with Jones.
The request further indicates that Requester considers that a substantial new question of patentability is raised as to claim 3 of the Key patent based on Smith taken with Jones and when further taken with the Horn publication.
The claims of the Key patent, for which reexamination is requested, require that an extruder be supported on springs at an angle of 30 degrees to the horizontal, while a specific chlorinated polymer is extruded through a specific extrusion die.
The Smith patent does not raise a substantial new question of patentability as to the Key claims. Smith’s teaching as to the extruder being spring-supported at 30 degrees is a substantial equivalent of the teaching of same by the Dorn patent which was considered in the prosecution of the application which became the Key patent.
In the request for reexamination, it is argued that Jones teaches the extrusion die. However, Jones was previously used, in the prosecution of the Key application, to teach the extrusion die. Further, there is no argument in the reexamination request that Jones is being applied in a manner different than it was applied in the prosecution of the Key application.
The Horn publication has been argued to show the connection of the support means to the extruder via bolts, as recited in claim 3 of the Key patent. Although this teaching was not provided in the prosecution of the Key application, the teaching would not be considered to be important to a reasonable examiner in deciding whether or not the Key claims are patentable.
The Horn publication has been argued to show the connection of the support means to the extruder via bolts, as recited in claim 3 of the Key patent. Although this teaching was not provided in the prosecution of the Key application, the teaching would not be considered to be important to a reasonable examiner in deciding whether or not the Key claims are patentable.
The references set forth in the request have been considered both alone and in combination.They fail to raise a substantial new question of patentability as to any one of the Key patent claims.
In view of the above, the request for reexamination is DENIED.
All correspondence relating to this inter partes reexamination proceeding should be directed:

By EFS:

Registered users may submit via the electronic filing system EFS-Web, at

https://efs.uspto.gov/efile/myportal/efs-registered.

By Mail to:

Mail Stop Inter Partes Reexam

Attn: Central Reexamination Unit

United States Patent & Trademark Office

P.O. Box 1450

Alexandria, VA 22313-1450

By FAX to: (571) 273-9900 Central Reexamination Unit
By hand (or delivery service):

Customer Service Window

Randolph Building

401 Dulany Street

Alexandria, VA 22314

For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i) (C) and (ii) states that correspondence (except for a request for reexamination and a corrected or replacement request for reexamination) will be considered timely filed if (a) it is transmitted via the Office’s electronic filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a certificate of transmission for each piece of correspondence stating the date of transmission, which is prior to the expiration of the set period of time in the Office action.

Any inquiry concerning this communication or earlier communications from the examiner, or as to the status of this proceeding, should be directed to the Central Reexamination Unit at telephone number (571) 272-7705.

/John Doe/

John Doe

Primary Examiner

CRU Art Unit 3998

/ARI/

Conferee

/BZ/

Conferee

2647.02   Processing of Decision [R-11.2013]

After the examiner has prepared the decision (and any Office action to accompany the decision) the heading is added to the cover page (PTOL-2063) of the decision. Where the first Office action accompanies the decision, the heading is also printed on the cover page (PTOL-2064) of the first Office action, and the first Office action is mailed with the decision.

A transmittal form PTOL-501 with the third party requester’s address will be completed (if a copy for mailing is not already in the case file). The transmittal form PTOL-501 is used to forward copies of Office actions and other communications to the third party requester. Whenever an Office action is issued, a copy of this form will be made and attached to a copy of the Office action. Use of this form removes the need to retype the third party requester’s address each time a mailing is made.

Where the decision is a grant of reexamination, the first Office action on the merits will ordinarily be prepared and mailed with the order granting reexamination. See MPEP § 2660.

The file will be appropriately annotated, update scanning will be effected, and appropriate PALM entries will be made at this time.

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Last Modified: 03/27/2014 10:10:35