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2643 Claims Considered in Deciding Request [Added R-2] - 2600 Optional Inter Partes Reexamination
2643 Claims Considered in Deciding Request [Added R-2]
The claims in effect at the time of the determination will be the basis for deciding whether "a substantial new question of patentability" is present. 37 CFR 1.923. While the examiner will ordinarily concentrate on those claims for which reexamination is requested, the finding of "a substantial new question of patentability" can be based upon a claim of the patent other than the ones for which reexamination is requested. For example, the request might seek reexamination of particular claims (i.e., claims 1-4), but the examiner is not limited to those claims. The examiner can make a determination that "a substantial new question of patentability" is present as to other claims in the patent (i.e., claims 5-7), without necessarily finding "a substantial new question" with regard to the claims requested (i.e., claims 1-4). If a substantial new question of patentability is found as to any claim, reexamination will be ordered and will normally cover all claims except for claims that have been finally held invalid in a Federal Court decision on the merits. The decision on the request should discuss all patent claims in order to inform the patent owner of the examiner's position. See MPEP § 2642 for patent claims which have been the subject of a prior decision.
Amendments and/or new claims present in any copending reexamination or reissue proceeding for the patent (to be reexamined) will not be considered nor commented upon when deciding a request for reexamination. Accordingly, a request is decided on the wording of the claims without any amendment. Where a request for reexamination is granted and reexamination is ordered, the first Office action (which ordinarily accompanies the order) and any subsequent reexamination prosecution should be on the basis of the claims as amended by any copending reexamination or reissue proceeding.
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