2656 Prior Art Patents and Printed Publications Reviewed by Examiner in Reexamination [R-11.2013]
Typically, the primary source of prior art will be the patents and printed publications cited in the request for inter partes reexamination.
Subject to the discussion provided below in this section, the examiner must also consider patents and printed publications:
- (A) cited by another reexamination requester under 37 CFR 1.510 or 37 CFR 1.915;
- (B) cited by the patent owner under a duty of disclosure (37 CFR 1.933) in compliance with 37 CFR 1.98;
- (C) discovered by the examiner in searching;
- (D) of record in the patent file from earlier examination;
- (E) of record in the patent file from any 37 CFR 1.501 submission prior to date of an order if it complies with 37 CFR 1.98; and
- (F) cited by the third party requester under appropriate circumstances pursuant to 37 CFR 1.948.
Where patents, publications, and other such items of information are submitted by a party (patent owner or requester) in compliance with the requirements of the rules, the requisite degree of consideration to be given to such information will normally be limited by the degree to which the party filing the information has explained its content and relevance. The initials of the examiner placed adjacent to the citations on the form PTO/SB/08A and 08B or its equivalent, without an indication to the contrary, do not signify that the information has been considered any further than noted above.
As to (D) above, the degree of consideration of information from the patent file and its parent files is dependent on the availability of the information. For example, as to a reference other than a U.S. patent and U.S. patent publication that is not scanned into the Image File Wrapper (IFW) what was said about that reference in the patent’s record is the full extent of consideration, unless otherwise indicated, or unless parties appropriately supply a copy .
As to (B) and (E) above, 37 CFR 1.98(a)(2) requires a legible copy of:
- (1) each foreign patent;
- (2) each publication or that portion which caused it to be listed, other than U.S. patents and U.S. patent application publications unless required by the Office;
- (3) for each cited pending unpublished U.S. application, the application specification including the claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion;
- (4) all other information or that portion which caused it to be listed.
It is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide the application/proceeding serial/control number and its status. A submission that is not permitted entry will be returned, expunged, or discarded at the sole discretion of the Office.
The exception to the requirement for reference copies noted in 37 CFR 1.98(d)(1) does not apply to reexamination proceedings since a reexamination proceeding does not receive 35 U.S.C. 120 benefit from the patent.
AFTER THE NOTICE OF INTENT TO ISSUE INTER PARTES REEXAMINATION CERTIFICATE (NIRC):
Once the NIRC has been mailed, the reexamination proceeding must proceed to publication of the Reexamination Certificate as soon as possible. Thus, when the patent owner provides a submission of patents and printed publications, or other information described in 37 CFR 1.98(a), after the NIRC has been mailed, the submission must be accompanied by (A) a factual accounting providing a sufficient explanation of why the information submitted could not have been submitted earlier, and (B) an explanation of the relevance of the information submitted with respect to the claimed invention in the reexamination proceeding. This is provided via a petition under 37 CFR 1.182 (with petition fee) for entry and consideration of the information submitted after NIRC. The requirement in item (B) above is for the purpose of facilitating the Office’s compliance with the statutory requirement for “special dispatch,” when the requirement in item (A) above is satisfied to provide a basis for interrupting the proceeding after the NIRC.
Once the reexamination has entered the Reexamination Certificate printing cycle (452 status), pulling the proceeding from that process provides an even greater measure of delay. 37 CFR 1.313 states for an application (emphasis added):
“(c) Once the issue fee has been paid, the application will not be withdrawn from issue upon petition by the applicant for any reason except:
(1) Unpatentability of one of more claims, which petition must be accompanied by an unequivocal statement that one or more claims are unpatentable, an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable;”
The printing cycle for an application occurs after the payment of the issue fee (there is no issue fee in reexamination), and thus 37 CFR 1.313(c) applies during the printing cycle for an application. Based on the statutory requirement for “special dispatch,” the requirements for withdrawal of a reexamination proceeding from its printing cycle are at least as burdensome as those set forth in 37 CFR 1.313(b) and (c). Accordingly, where a submission of patents and printed publications, or other information described in 37 CFR 1.98(a), is made while a proceeding is in its printing cycle, the patent owner must provide an unequivocal statement as to why the art submitted makes at least one claim unpatentable, an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable. This is in addition to the above-discussed (see item (A) above) factual accounting providing a sufficient explanation of why the information submitted could not have been submitted earlier. The submission of patents and printed publications must be accompanied by a petition under 37 CFR 1.182 (with petition fee) for withdrawal of the reexamination proceeding from the printing cycle for entry and consideration of the information submitted by patent owner. A grantable petition must provide the requisite showing discussed in this paragraph.