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2214 Content of Request > - 2200 Citation of Prior Art and Ex Parte Reexamination of Patents

2214 Content of Request >for Ex Parte Reexamination< [R-2]

37 CFR 1.510 Request for ex parte reexamination.

(a) Any person may, at any time during the period of enforceability of a patent, file a request for an ex parte reexamination by the Office of any claim of the patent on the basis of prior art patents or printed publications cited under § 1.501. The request must be accompanied by the fee for requesting reexamination set in § 1.20(c)(1).

(b) Any request for reexamination must include the following parts:

(1) A statement pointing out each substantial new question of patentability based on prior patents and printed publications.

(2) An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested. If appropriate the party requesting reexamination may also point out how claims distinguish over cited prior art.

(3) A copy of every patent or printed publication relied upon or referred to in paragraph (b)(1) and (2) of this section accompanied by an English language translation of all the necessary and pertinent parts of any non-English language patent or printed publication.

(4) A copy of the entire patent including the front face, drawings, and specification/claims (in double column format) for which reexamination is requested, and a copy of any disclaimer, certificate of correction, or reexamination certificate issued in the patent. All copies must have each page plainly written on only one side of a sheet of paper.

(5) A certification that a copy of the request filed by a person other than the patent owner has been served in its entirety on the patent owner at the address as provided for in § 1.33(c). The name and address of the party served must be indicated. If service was not possible, a duplicate copy must be supplied to the Office.

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37 CFR 1.510(a) requires the payment of the fee specified in 37 CFR 1.20(c)(1) for a request for reexamination. See MPEP § 2215.

37 CFR 1.510(b) sets forth the required elements of a request for >ex parte< reexamination. The elements are as follows:

"(1) a statement pointing out each substantial new question of patentability based on prior patents and printed publications."

This statement should clearly point out what the requester considers to be the substantial new question of patentability which would warrant a reexamination. The cited prior art should be listed on a form PTO-1449 by the requester. See also MPEP § 2217.

A request for reexamination must assert a substantial new question of patentability. A requester may not, in a request for reexamination, argue that the submitted references do not raise a substantial new question of patentability, and that no order for reexamination should be issued.

"(2) An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested. If appropriate the party requesting reexamination may also point out how claims distinguish over cited prior art."

The request should apply the cited prior art to every claim for which reexamination is requested. If the request is filed by the patent owner, he or she may also indicate how the claims distinguish from the cited prior art patents and printed publications.

"(3) A copy of every patent or printed publication relied upon or referred to in paragraph (b)(1) and (2) of this section accompanied by an English language translation of all the necessary and pertinent parts of any non- English language patent or printed publication."

A copy of each cited patent or printed publication, as well as a translation of each non-English document >(or a translation of at least the portion(s) relied upon)< is required so that all materials will be available to the examiner for full consideration. See MPEP § 2218.

"(4) A copy of the entire patent including the front face, drawings, and specification/claims (in double column format) for which reexamination is requested, and a copy of any disclaimer, certificate of correction, or reexamination certificate issued in the patent. All copies must have each page plainly written on only one side of a sheet of paper."

A copy of the patent, for which reexamination is requested, should be provided **>with the specification and claims submitted in a double column format. The drawing pages of the printed patent are presented as they appear in the printed patent; the same is true for the front page of the patent<. Thus, a full copy of the printed patent (including the front page) can be used to provide the abstract, drawings, specification, and claims of the patent for the reexamination request. >The printed patent is to be reproduced on only one side of the paper; a two sided copy of the patent is not proper.<

Any disclaimer, certificate of correction, or reexamination certificate issued in the patent becomes a part of the patent. Thus, a copy of each must be supplied in order to provide the complete patent. >The copy must have each page plainly written on only one side of a sheet of paper.<

"(5) A certification that a copy of the request filed by a person other than the patent owner has been served in its entirely on the patent owner at the address as provided for in § 1.33(c). The name and address of the party served must be indicated. If service was not possible, a duplicate copy must be supplied to the Office."

If the request is filed by a person other than the patent owner, a certification that a copy of the request papers has been served on the patent owner must be included. >The certification must set forth the name and address employed in serving the patent owner. If service was not possible, a duplicate copy of the request must be supplied to the Office.< The request should be as complete as possible, since there is no guarantee that the examiner will consider other prior art when making the decision on the request. Also, if no statement >under 37 CFR 1.530(b)< is filed by the patent owner, no later reply >under 37 CFR 1.535< or other submission may be filed by the requester in the ex parte reexamination proceeding. See also MPEP § 2220.

Form * >PTO/SB/57< should be helpful to persons filing requests for reexamination. The use of this form >as the transmittal form and cover sheet of a request for reexamination< is encouraged, but its use is not a requirement of the law nor the rules. >Following form PTO/SB/57, is a sample of a statement (on which the request is based) that should be attached to the form PTO/SB/57 cover sheet.<

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	Attachment to Form PTO 1465 providing information of Pat. No. 9, 999, 999
Sir:
Reexamination under 35 U.S.C. 302- 307 and 37 CFR1. 510 is requested of United States patent number 9,999 999 which issued on July 7 1987, to Joseph Smith. This patent is still enforceable. I. Claims for which reexamination is requested : - Reexamination is requested of claims 1- 3 of the Smith patent in view of the earlier United States Patent * number 594 225 to Berridge which is listed on attached Information Disclosure Statement form and of which a copy is enclosed. - Reexamination is also requested of claim 4 of the Smith patent in view of the earlier Swiss Patent * 80, 555 to Hotopp in view of the disclosure in American Machinist " magazine , October 16 1950 , issue , on page 169. An English translation of the German language Swiss document is enclosed. Copies of the Hotopp and ' American Machinist " documents are also enclosed. II. Explanation of pertinencv and manner of applving cited prior art to every claim for which reexamination is requested based on prior art : Claims 1- 3 of the Smith patent are considered to be fully anticipated under 35 U. c. 102 by prior art patent document to Berridge. Claim 3 of the Smith patent, which is more specific than claims I and 2 in all features, is set forth below with an explanation as to how the prior art patent document to Berridge meets all the recited features. .
Smith, claim 3:
"In a cutting and crimpimg tool"	(Berridge page 1, lines 10-13 states his invention is "an improved tool for crimping metal which in preferred form of embodiment is combined with a cutting-tool or shears, forming therewith a combination-tool" .)
"the combination with the cutting blades"	(elements 4 and 5 in Berridge)
"and their pivoted handles"	(elements 1 and 2 in Berridge)

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