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2262 Form and Content of Office Action [R-2] - 2200 Citation of Prior Art and Ex Parte Reexamination of Patents
2262 Form and Content of Office Action [R-2]
The examiner's first Office action will be a statement of the examiner's position and should be so complete that the second Office action can properly be made a final action. See MPEP § 2271.
All Office actions are to be written or dictated and then typed. The first Office action must be sufficiently detailed that the pertinency and manner of applying the cited prior art to the claims is clearly set forth therein. If the examiner concludes in any Office action that one or more of the claims are patentable over the cited patents or printed publications, the examiner should indicate why the claim(s) is clearly patentable in a manner similar to that used to indicate reasons for allowance ( MPEP § 1302.14). If the record is clear why the claim(s) is/are clearly patentable, the examiner may refer to the particular portions of the record which clearly establish the patentability of the claim(s). The first action should also respond to the substance of each argument raised by the patent owner and requester pursuant to 37 CFR 1.510, 1.530, and 1.535. If arguments are presented which are inappropriate in reexamination, they should be treated in accordance with 37 CFR 1.552(c). It is especially important that the examiner's action in reexamination be thorough and complete in view of the finality of a reexamination proceeding and the patent owner's inability to file a continuation proceeding.
Normally, the title will not need to be changed during reexamination. If a change of the title is necessary, patent owner should be notified of the need to provide an amendment changing the title as early as possible in the prosecution as a part of an Office Action. If all of the claims are found to be patentable and a Notice of Intent to Issue >Ex Parte< Reexamination Certificate has been or is to be mailed, a change to the title of the invention by the examiner may only be done by ** >a formal< Examiner's Amendment. Changing the title and merely initialing the change is NOT permitted in reexamination.
A sample of a first Office action in a reexamination proceeding is set forth below.
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Office Action in Ex Parte Reexamination [Pages 2 and 3 of 3]
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