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2671    Examiner Action Following Response/Comments or Expiration of Time for Same [R-11.2013]

I.   RECONSIDERATION

After response by the patent owner and any third party comments, the patent under reexamination will be reconsidered. The patent owner and the third party requester will be notified as to any claims rejected, any claims found patentable and any objections or requirements made. The patent owner may respond to such Office action with or without amendment, and the third party requester may provide comments after the patent owner’s response. If the patent owner response contains an amendment, the examiner will consider the amendment to determine whether the amendment raises issues of 35 U.S.C. 112 and/or broadening of the claims under 35 U.S.C. 314. The patent under reexamination will be reconsidered until the proceeding is ready for closing prosecution, at which point the examiner will issue an Action Closing Prosecution (ACP). See MPEP § 2671.02.

II.   CASE IS TAKEN UP FOR ACTION

The case should be acted on promptly, in accordance with the statutory requirement for “special dispatch within the Office” (35 U.S.C. 314(c)).

After the examiner receives the case file (having the patent owner’s response to the Office action and any third party requester comments on that response), he/she will prepare for a pre-action consultation conference with a Reexamination Legal Adviser (RLA). At the consultation conference, the RLA will provide instructions as to preparation of the Office action addressing the patent owner’s response and any third party requester comments on that response. The consultation should be completed within two (2) weeks of when the case was initially forwarded to the examiner.

After the consultation conference, the examiner will promptly take up the case for action. The examiner will prepare an Office action no later than two weeks from the date of the consultation conference (unless otherwise authorized by the Central Reexamination Unit (CRU) Director or a RLA of the Office of the Patent Legal Administration (OPLA)). The case, with the completed action, will be forwarded to the CRU Supervisory Patent Reexamination Specialist (SPRS) or Technology Center (TC) Quality Assurance Specialist (QAS) for review. If the CRU SPRS/TC QAS returns the case to the examiner for correction/revision, the correction/revision must be handled expeditiously and returned to the CRU SPRS/TC QAS within the time set for such by the CRU SPRS/TC QAS.

III.   OPTIONS AS TO OFFICE ACTION TO ISSUE

At this point in the proceeding, the examiner will have the following options as to the next Office action to issue:

  • (A) There is no timely response by the patent owner (since the patent owner did not respond, no third party requester comments may be filed):
    • (1) If all claims are under rejection, the examiner will issue a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC). See MPEP § 2687. All claims will be canceled by formal examiner’s amendment (attached as part of the NIRC).
    • (2) If at least one claim is free of rejection and objection, the examiner will issue an Action Closing Prosecution (ACP). In the ACP, it will be stated that any claims under rejection or objection are withdrawn from consideration and will be canceled upon issuance of a NIRC. It will further be stated that the proceeding will be limited to the claims found patentable at the time of the failure to respond, and to claims (added or amended) which do not expand the scope of the claims found patentable at that time. See MPEP § 2666.10.

It should be noted that even in a situation where there has been no patent owner response, the examiner is always free to issue a supplemental Office action providing a new rejection of claims previously found patentable, where new information comes to the attention of the examiner warranting the new rejection. Of course, such an action would ordinarily not be made an ACP.

  • (B) There is a timely response by the patent owner, and the third party requester does not timely provide comments:
    • (1) If the response by the patent owner is incomplete, the examiner may issue an incomplete-response action. See MPEP § 2666.30.
    • (2) If there is a formality defect in the response by the patent owner, the examiner will issue a Notice of Defective Paper in Reexam. See MPEP § 2666.50.
    • (3) If the patent owner’s response is complete and defect-free, and the proceeding is ready for closing prosecution, the examiner will issue an ACP. See MPEP § 2671.02. This is true if all claims are determined to be patentable, all claims are determined to be rejected, or if some claims are determined to be patentable and some claims are determined to be rejected. After the ACP has been issued, the patent owner can submit comments with or without a proposed amendment in accordance with MPEP § 2672, and the third party requester can then file comments responsive to the patent owner’s submission.
    • (4) If the patent owner’s response is complete and defect-free, and the proceeding is not ready for closing prosecution, the examiner will issue a new office action that does not close prosecution. See MPEP § 2671.01.
  • (C) There is a timely response by the patent owner, and the third party requester does provide timely comments:
    • (1) If the response by the patent owner is incomplete, the examiner may issue an incomplete-response action. See MPEP § 2666.30.
    • (2) If the comments by third party requester go beyond the scope of what is permitted for the third party comments, the examiner will follow the procedures set forth in MPEP § 2666.05 for improper comments.
    • (3) If there is a formality defect in the response by the patent owner, the examiner will issue a Notice of Defective Paper in Reexam. See MPEP § 2666.50.
    • (4) If there is a formality defect in the comments by the third party requester, the examiner will issue a Notice of Defective Paper in Reexam. See MPEP § 2666.50.
    • (5) If the response and comments are in order, and the proceeding is ready for closing prosecution, the examiner will issue an ACP. See MPEP § 2671.02. This is true if all claims are determined to be patentable, all claims are determined to be rejected, or if some claims are determined to be patentable and some claims are determined to be rejected. After the ACP has been issued, the patent owner can submit comments with or without a proposed amendment in accordance with MPEP § 2672 and the third party requester can then file comments responsive to the patent owner’s submission.
    • (6) If the response and comments are in order and the proceeding is not ready for closing prosecution, the examiner will issue a new office action that does not close prosecution. See MPEP § 2671.01.
  • (D) There is a timely request for issuance of an Expedited Right of Appeal Notice:

    37 CFR 1.953(b) provides for the issuance of an expedited Right of Appeal Notice (RAN), where the criteria for the same is satisfied. At any time after the patent owner’s response to the first Office action on the merits in an inter partes reexamination, the patent owner and third party requester(s) may request the immediate issuance of a RAN. Where such a request is presented in the proceeding, see MPEP § 2673.02 for guidance as to whether an expedited Right of Appeal Notice will be issued.

2671.01   Examiner Issues Action on Merits That Does Not Close Prosecution [R-11.2013]

37 C.F.R. 1.949   Examiner’s Office action closing prosecution in inter partes reexamination.

Upon consideration of the issues a second or subsequent time, or upon a determination of patentability of all claims, the examiner shall issue an Office action treating all claims present in the inter partes reexamination, which may be an action closing prosecution. The Office action shall set forth all rejections and determinations not to make a proposed rejection, and the grounds therefor. An Office action will not usually close prosecution if it includes a new ground of rejection which was not previously addressed by the patent owner, unless the new ground was necessitated by an amendment.

I.   WHEN A NON-ACP ACTION IS ISSUED

After reviewing the patent owner’s response and third party requester comments (if such comments are filed), the examiner may determine that the proceeding is not ready for issuing an Action Closing Prosecution (ACP). Such a determination would be based upon the following:

  • (A) In accordance with 37 CFR 1.949, an action will not normally close prosecution if it includes a new ground of rejection which was not previously addressed by the patent owner, unless the new ground was necessitated by an amendment. The examiner will not normally close prosecution where a new ground of rejection not necessitated by an amendment is made, because the patent owner’s right to amend the claims becomes limited after prosecution is closed. For an exception where the patent owner submits an IDS, see MPEP § 2671.02.
  • (B) Where an ACP would be proper, but the examiner feels that the issues are not yet clearly defined, it is always within the discretion of the examiner to issue an Office action that does not close prosecution (rather than an ACP).

II.   OVERALL CONTENT

Where the examiner determines that the proceeding is not ready for issuing an ACP, the examiner will issue an Office action that will be similar in form to a first Office action, but will differ in that it addresses the positions and argument set forth in the patent owner’s response and the third party requester comments (if such comments are filed). This Office action will be a statement of the examiner’s position, so complete that the next Office action can properly be made an action closing prosecution.

The action should be comprehensive. It should address all issues as to the patents or printed publications. The action will clearly set forth each ground of rejection and/or ground of objection, and the reasons supporting the ground(s). The action will also clearly set forth each rejection proposed by the third party requester that the examiner refuses to adopt. Reasons why the rejection proposed by the third party is not appropriate (i.e., why the claim cannot be rejected under the ground proposed by the third party requester) must be clearly stated for each rejection proposed by the third party requester that the examiner refuses to adopt. Comprehensive reasons for patentability must be given for each determination favorable to patentability of claims. See MPEP § 1302.14 for examples of suitable statements of reasons for allowance.

III.   REVIEW OF AMENDATORY MATTER UNDER 35 U.S.C. 112

Where an amendment has been submitted in the patent owner’s response, the amendatory matter (i.e., matter revised or newly added) should be reviewed for compliance with 35 U.S.C. 112. As to the content of the patent that has not been revised, a review based upon 35 U.S.C. 112 is not proper in reexamination, and no such review should be made.

IV.   WITHDRAWAL OF REJECTION

Where the examiner withdraws a ground of rejection originally initiated by the examiner, such withdrawal should be clearly stated in the Office action as a decision favorable to patentability with respect to the withdrawn rejection. The third party requester’s next set of comments that may be filed (after a patent owner response to an action) may propose the withdrawn rejection as a “rejection proposed by the third party requester.” In the event the patent owner fails to respond to all actions leading to the Right of Appeal Notice (RAN), including the ACP, and a RAN is then issued, the third party requester may appeal this withdrawal of rejection as a final decision favorable to patentability. See 37 CFR 41.61(a)(2).

Where the claims have not been amended and the examiner withdraws a ground of rejection previously proposed by the third party requester (e.g., based on the patent owner’s argument or evidence submitted), the examiner should treat the issue as a rejection proposed by the third party requester that the examiner refuses to adopt.

Generally (subject to the below-stated exception), where the claims have been amended and the examiner withdraws a ground of rejection previously proposed by the third party requester, this is not a refusal of the examiner to adopt the rejection that was proposed by the requester, since the rejection was never proposed as to the amended claims. The third party requester’s next set of comments that may be filed (after a patent owner response to an action) may propose the withdrawn rejection as a "rejection proposed by the third party requester" as to the amended claims. In the event the patent owner fails to respond to all actions leading to the RAN, including the ACP, and a RAN is then issued, the third party requester may appeal this withdrawal of rejection as a final decision favorable to patentability. See 37 CFR 41.61(a)(2).

If a claim is amended merely to include a dependent claim that was previously subjected to a proposed requester rejection, and the examiner withdraws that ground of rejection as to the newly amended claim, such would be a refusal to adopt the third party requester’s previously proposed rejection of the dependent claim. Thus, the examiner would treat the issue as a rejection proposed by the third party requester that the examiner refuses to adopt.

V.   ISSUES NOT WITHIN SCOPE OF REEXAMINATION

If questions not within the scope of reexamination proceedings (for example, questions of patentability based on public use or on sale, conduct issues, abandonment under 35 U.S.C. 102) have been newly raised by the patent owner response or the third party requester comments being addressed by the present Office action, the existence of such questions will be noted by the examiner in the Office action, using form paragraph 26.03.

¶ 26.03    Issue Not Within Scope of Inter Partes Reexamination

It is noted that an issue not within the scope of reexamination proceedings has been raised. [1].The issue will not be considered in a reexamination proceeding. 37 CFR 1.906(c). While this issue is not within the scope of reexamination, the patentee is advised that it may be desirable to consider filing a reissue application provided that the patentee believes one or more claims to be partially or wholly inoperative or invalid.

Examiner Note:

  • 1. In bracket 1, identify the issues.
  • 2. This paragraph may be used either when the patent owner or the third party requester raises issues such as (but not limited to) public use or on sale, conduct, or abandonment of the invention. Such issues should not be raised independently by the patent examiner.

Note that if questions of patentability based on public use or on sale, conduct issues, abandonment under 35 U.S.C. 102(c), etc., have been independently discovered by the examiner during a reexamination proceeding but were not raised by the third party requester or the patent owner, the existence of such questions will not be noted by the examiner in any Office action, because 37 CFR 1.906(c) is only directed to such questions “raised by the patent owner or the third party requester.”

VI.   COVER SHEET

Form PTOL-2064 should be used as the Office action cover sheet. Since the Office action is responsive to a patent owner response, and possibly the third party requester comments, the space on the PTOL-2064 for the date of the communication(s) to which the Office action is responsive to should be filled in. Generally, the patent owner is given two months to respond to the action, and thus “Two” should be inserted in the appropriate space.

VII.   SIGNATORY AUTHORITY

As with all other Office correspondence on the merits in a reexamination proceeding, the action must be signed by a primary examiner.

VIII.   CONCLUDING PARAGRAPHS

In view of the requirement for “special dispatch” in inter partes reexamination proceedings (35 U.S.C. 314(c)), it is intended that the examiner be able to close prosecution at the earliest possible time. Accordingly, the Office action should include a statement cautioning the patent owner that a complete response should be made to the action, since the next action is expected to be an ACP. The action should further caution the patent owner that the requirements of 37 CFR 1.116(b) will be strictly enforced after an ACP and that any amendment after an ACP must include “a showing of good and sufficient reasons why they are necessary and were not earlier presented” in order to be considered. Form paragraph 26.05 should be inserted at the end of the Office action followed by form paragraph 26.73.

¶ 26.05    Papers To Be Submitted in Response to Action

In order to ensure full consideration of any amendments, affidavits or declarations, or other documents as evidence of patentability, such documents must be submitted in response to this Office action. Submissions after the next Office action, which is intended to be an Action Closing Prosecution (ACP), will be governed by 37 CFR 1.116(b) and (d), which will be strictly enforced.

¶ 26.73    Correspondence and Inquiry as to Office Actions

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.

Examiner Note:

  • 1. This form paragraph is used at the end of inter partes reexamination communications.
  • 2. The examiner having charge of the proceeding is not to be contacted by the parties to the proceeding.

IX.   PROCESS OF PREPARING THE ACTION

Upon receipt of a patent owner response to the action (and third party requester comments where permitted) by the CRU, or upon the expiration of the time to submit same, the examiner will be notified. The examiner will prepare for and set up a panel review conference as per MPEP § 2671.03, to discuss the issuance of the Office action. The examiner may prepare the Office action after the conference, or may prepare the Office action prior to the conference and revise it as needed after the conference.

If the conference confirms the examiner’s preliminary decision to reject and/or allow the claims and issue a non-final Office action, the proposed Office action shall be issued and signed by the examiner, with the two or more other conferees initialing the action (as "conferee" ) to indicate their presence in the conference.

X.   NO RESPONSE BY PATENT OWNER

Where the patent owner fails to timely respond to an action requiring a response and there are no patentable claims, a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) will be issued as the action that does not close prosecution. No panel review conference is needed in this instance, as the issuance of the NIRC is essentially ministerial.

2671.02   Examiner Issues Action Closing Prosecution (ACP) [R-11.2013]

37 C.F.R. 1.949   Examiner’s Office action closing prosecution in inter partes reexamination.

Upon consideration of the issues a second or subsequent time, or upon a determination of patentability of all claims, the examiner shall issue an Office action treating all claims present in the inter partes reexamination, which may be an action closing prosecution. The Office action shall set forth all rejections and determinations not to make a proposed rejection, and the grounds therefor. An Office action will not usually close prosecution if it includes a new ground of rejection which was not previously addressed by the patent owner, unless the new ground was necessitated by an amendment.

Although an Action Closing Prosecution (ACP) has many attributes similar to a “final rejection” made in an ex parte reexamination proceeding or in a non-provisional application, it is not a final action, and, as such, it cannot be appealed from. An appeal can only be taken after the examiner issues a Right of Appeal Notice (RAN). See MPEP § 2673.02.

Before an ACP is in order, a clear issue should be developed. When all claims are found patentable in the first action, the examiner will, at that point, issue an ACP, since the patent owner has nothing to respond to. Otherwise, it is intended that the second Office action in the reexamination proceeding will ordinarily be an ACP. The criteria for issuing an ACP is analogous to that set forth in MPEP § 706.07(a) for making a rejection final in an application.

All parties to the reexamination should recognize that a reexamination proceeding may result in the final cancellation of claims from the patent and that the patent owner does not have the right to continue the proceeding by refiling under 37 CFR 1.53(b) or 1.53(d) nor by filing a Request for Continued Examination under 37 CFR 1.114, and the patent owner cannot file an inter partes reexamination request (see MPEP § 2612). Complete and thorough actions by the examiner, coupled with complete responses by the patent owner and complete comments by the third party requester (including early presentation of evidence under 37 CFR 1.131(a) or 1.132) will go far in reaching a desirable early termination of the prosecution of the reexamination proceeding.

In making an ACP (A) all outstanding grounds of rejection of record should be carefully reviewed, (B) all outstanding determinations of patentability (decisions to not make a proposed rejection) of record should be carefully reviewed, and (C) any grounds of rejection relied upon and any determinations of patentability relied upon should be reiterated.

I.   CONTENT

The grounds of rejection and determinations of patentability must (in the ACP) be clearly developed to such an extent that the patent owner and the third party requester may readily judge the advisability of filing comments after an ACP pursuant to 37 CFR 1.951(a) and (b), respectively.

The ACP should address all issues as to the patents or printed publications. The ACP will clearly set forth each rejection proposed by the third party requester that the examiner refuses to adopt. Reasons why the rejection proposed by the third party requester is not appropriate (i.e., why the claim cannot be rejected under the ground proposed by the third party requester) must be clearly stated for each rejection proposed by the third party requester that the examiner refuses to adopt. Comprehensive reasons for patentability must be given for each determination favorable to patentability of claims. See MPEP § 1302.14 for examples of suitable statements of reasons for allowance.

Where a single previous Office action contains a complete statement of a ground of rejection or of reasons for not making a proposed rejection, the ACP may incorporate by reference that statement. In any event, the ACP must also include a rebuttal of any arguments raised in the patent owner’s response and must reflect consideration of any comments made by the third party requester.

II.   REVIEW OF AMENDATORY MATTER UNDER 35 U.S.C. 112

Where an amendment has been submitted in the patent owner’s response, the amendatory matter (i.e., matter revised or newly added) should be reviewed for compliance with 35 U.S.C. 112. As to the content of the patent that has not been revised, a review based upon 35 U.S.C. 112 is not proper in reexamination, and no such review should be made.

III.   WITHDRAWAL OF REJECTION

Where the examiner withdraws a ground of rejection originally initiated by the examiner, such withdrawal should be clearly stated in the ACP as a decision favorable to patentability with respect to the withdrawn rejection. The third party requester’s next set of comments that may be filed (after a patent owner response to an action) may propose the withdrawn rejection as a “rejection proposed by the third party requester.” In the event the patent owner fails to respond to the ACP and a Right of Appeal Notice (RAN) is then issued, the third party requester may appeal this withdrawal of rejection as a final decision favorable to patentability. See 37 CFR 41.61(a)(2). Where the examiner withdraws a ground of rejection previously proposed by the third party requester, the examiner should treat the issue as rejection proposed by the third party requester that the examiner refuses to adopt.

IV.   ISSUES NOT WITHIN SCOPE OF REEXAMINATION

If questions not within the scope of reexamination proceedings (for example, questions of patentability based on public use or on sale, conduct issues, abandonment under 35 U.S.C. 102(c)) have been newly raised by the patent owner response or the third party requester comments being addressed by the ACP, the existence of such questions will be noted by the examiner in the ACP, using form paragraph 26.03.

¶ 26.03    Issue Not Within Scope of Inter Partes Reexamination

It is noted that an issue not within the scope of reexamination proceedings has been raised. [1].The issue will not be considered in a reexamination proceeding. 37 CFR 1.906(c). While this issue is not within the scope of reexamination, the patentee is advised that it may be desirable to consider filing a reissue application provided that the patentee believes one or more claims to be partially or wholly inoperative or invalid.

Examiner Note:

  • 1. In bracket 1, identify the issues.
  • 2. This paragraph may be used either when the patent owner or the third party requester raises issues such as (but not limited to) public use or on sale, conduct, or abandonment of the invention. Such issues should not be raised independently by the patent examiner.

V.   COVER SHEET

Form PTOL-2065 should be used as the cover sheet for the ACP. Since the Office action is responsive to a patent owner response, and possibly the third party requester comments, the space on the PTOL-2065 for the date of the communication(s) to which the Office action is responsive to should be filled in. Generally, the patent owner is given one month to respond to the action, and thus “One” should be inserted in the appropriate space for such.

VI.   SIGNATORY AUTHORITY

As with all other Office correspondence on the merits in a reexamination proceeding, the ACP must be signed by a primary examiner.

VII.   CONCLUDING PARAGRAPHS

The ACP should conclude with the following form paragraphs:

¶ 26.07    Action Closing Prosecution

This is an ACTION CLOSING PROSECUTION (ACP); see MPEP § 2671.02.

  • (1) Pursuant to 37 CFR 1.951(a), the patent owner may once file written comments limited to the issues raised in the reexamination proceeding and/or present a proposed amendment to the claims which amendment will be subject to the criteria of 37 CFR 1.116 as to whether it shall be entered and considered. Such comments and/or proposed amendments must be filed within a time period of 30 days or one month (whichever is longer) from the mailing date of this action. Where the patent owner files such comments and/or a proposed amendment, the third party requester may once file comments under 37 CFR 1.951(b) responding to the patent owner’s submission within 30 days from the date of service of the patent owner’s submission on the third party requester
  • (2) If the patent owner does not timely file comments and/or a proposed amendment pursuant to 37 CFR 1.951(a), then the third party requester is precluded from filing comments under 37 CFR 1.951(b).
  • (3) Appeal cannot be taken from this action, since it is not a final Office action.

¶ 26.73    Correspondence and Inquiry as to Office Actions

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.

Examiner Note:

  • 1. This form paragraph is used at the end of inter partes reexamination communications.
  • 2. The examiner having charge of the proceeding is not to be contacted by the parties to the proceeding.

VIII.   PROCESS OF PREPARING THE ACTION

After an examiner has determined that the reexamination proceeding is ready for the ACP action, the examiner will set up a panel review conference as per MPEP § 2671.03, to discuss the issuance of the ACP action. The examiner may prepare the action after the conference, or may prepare the action prior to the conference and revise it as needed after the conference.

If the conference confirms the examiner’s preliminary decision to reject and/or allow the claims and issue an ACP, the proposed ACP action shall be issued and signed by the examiner, with the two other conferees initialing the action (as conferee) to indicate their presence in the conference. When ready, the examiner’s action is hand-carried by the examiner directly to the CRU support staff for processing and mailing.

IX.   WHERE PATENT OWNER FAILS TO RESPOND AND CLAIMS HAVE BEEN FOUND PATENTABLE

Where the patent owner fails to respond to the first Office action (or any subsequent Office action which is prior to ACP) and any claims have been found patentable in the first action (or a subsequent action), the examiner will issue an ACP (see MPEP § 2671). The ACP should repeat all determinations of patentability (decisions to not make a proposed rejection) applicable to the patentable claims and incorporate by reference the reasons for each determination (the reasons for not making each proposed rejection). If the examiner realizes that more explanation would be helpful, the examiner should include it. Since the patent owner failed to respond to the first Office action, the proceeding will be limited to the claims found patentable and to new claims which do not expand the scope of the claims found patentable (if the new claims have an entry right or are otherwise entered at the option of the examiner). See MPEP § 2666.10. A panel review conference pursuant to MPEP § 2671.03 will be held.

X.   ART CITED BY PATENT OWNER DURING PROSECUTION

Where art is submitted in a prior art citation under 37 CFR 1.501 and/or 37 CFR 1.555 (an IDS filed in a reexamination is construed as a prior art citation) and the submission is not accompanied by a statement similar to that of 37 CFR 1.97(e), the examiner may use the art submitted and make the next Office action an ACP action whether or not the claims have been amended, provided that no other new ground of rejection is introduced by the examiner based on art not cited in the prior art citation. See MPEP § 706.07(a).

2671.03   Panel Review [R-08.2012 ]

A panel review will be conducted at each stage of the examiner’s examination in an inter partes reexamination proceeding, other than for actions such as notices of informality or incomplete response. Matters requiring decision outside of the examiner’s jurisdiction (e.g., decisions on petitions or extensions of time, or Central Reexamination Unit (CRU) support staff notices) will not be reviewed by a panel.

The panel review is carried out for each Office action. The panel reviews the examiner’s preliminary decision to reject and/or allow the claims in the reexamination proceeding, prior to the issuance of each Office action.

I.   MAKE-UP OF THE PANEL

The panel will consist of three members, one of whom will be a manager. The second member will be the examiner in charge of the proceeding. The manager will select the third member. The examiner-conferees will be primary examiners, or examiners who are knowledgeable in the technology of the invention claimed in the patent being reexamined and/or who are experienced in reexamination practice. The majority of those present at the conference will be examiners who were not involved in the examination or issuance of the patent. An “original” examiner (see MPEP § 2636 ) should be chosen as a conferee only if that examiner is the most knowledgeable in the art, or there is some other specific and justifiable reason to choose an original examiner as a participant in the conference.

II.   PANEL PROCESS

The examiner must inform his/her manager of his/her intent to issue an Office action. The manager will then convene a panel and the members will confer and review the patentability of the claim(s). If the conference confirms the examiner’s preliminary decision to reject and/or allow the claims, the Office action shall be issued and signed by the examiner, with the two other conferees initialing the action (as “conferee”) to indicate their participation in the conference. Both conferees will initial, even though one of them may have dissented from the 3-party conference decision as to the patentability of claims. If the conference does not confirm the examiner’s preliminary decision, the examiner will reevaluate and issue an appropriate Office action .

Where the examiner in charge of the proceeding is not in agreement with the conference decision, the manager will generally assign the proceeding to another examiner.

III.   WHAT THE CONFERENCES SHOULD ACCOMPLISH

Each conference will provide a forum to consider all issues of patentability as well as procedural issues having an impact on patentability. Review of the patentability of the claims by more than one primary examiner should diminish any perception that the patent owner can disproportionately influence the examiner in charge of the proceeding. The conferences will also provide greater assurance that all matters will be addressed appropriately. All issues in the proceeding will be viewed from the perspectives of three examiners. What the examiner in charge of the proceeding might have missed, one of the other two conference members would likely detect. The conference will provide for a comprehensive discussion of, and finding for, each issue.

IV.   CONSEQUENCES OF FAILURE TO HOLD CONFERENCE

Should the examiner issue Office action without panel review, the patent owner or the third party requester who wishes to object must promptly file a paper alerting the Office of this fact. (The failure to hold a panel review conference would be noted by the parties where there are no conferees’ initials at the end of the Office action.) Any challenge of the failure to hold a panel review conference must be made within two weeks of receipt of the Office action issued, or the challenge will not be considered. In no event will the failure to hold a patentability review conference, by itself, be grounds for vacating any Office decision(s) or action(s) and “restarting” the reexamination proceeding.

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