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2247 Decision on Request for Reexamination, Request Denied [R-2] - 2200 Citation of Prior Art and Ex Parte Reexamination of Patents
2247 Decision on Request for Reexamination, Request Denied [R-2]
The request for reexamination will be denied if a substantial new question of patentability is not found based on patents or printed publications.
If the examiner concludes that no substantial new question of patentability has been raised, the examiner should ** >prepare a decision denying the reexamination request. Form paragraph 22.02 should be used as the introductory paragraph in a decision denying reexamination.
¶ 22.02 No New Question of Patentability
No substantial new question of patentability is raised by the request for reexamination and prior art cited therein for the reasons set forth below.
The decision will then indicate, for each patent and printed publication cited in the request, why the citation is:<
(A) Cumulative to the teachings of the art cited in the earlier concluded examination of the patent;
(B) Not available against the claims (e.g., the reference is not available as * >prior< art because of its date or the reference is not a publication);
(C) Not important to a reasonable examiner in deciding whether any claim of the patent for which reexamination is requested is patentable>,< even though the citation is not cumulative and the citation is available against the claim; or
(D) One which was cited in the record of the patent and is barred by the guidelines set forth in MPEP § 2242 **>subsection II. A.<
The examiner should also >, in the decision< respond to the substance of each argument raised by the 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 1.552(c).
See MPEP § 2247.01 for an example of a decision denying a request for reexamination.
**>The decision denying a request for reexamination is mailed, and the reexamination file is stored in the storage area established by the Technology Center (TC) for reexamination files, to await any 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 TC 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 word "Terminated" is then written in green ink on the face of the file at the top between the word "Reexamination" and the hand-written patent number. After this TC processing is carried out, the reexamination file is given a 420 status and then forwarded by the TC to the files repository (Location 9200) for storage with the patent file.
In the files repository, the reexamination file containing the denied request and the decision thereon are associated with the official patent file, and become part of the patent's record.<
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