2614 Content of Request for - 2600 Optional Inter Partes Reexamination

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2614 Content of Request for - 2600 Optional Inter Partes Reexamination

2614 Content of Request for Inter Partes Reexamination [Added R-2]

37 CFR 1.915 Content of request for inter partes reexamination.
(a) The request must be accompanied by the fee for requesting inter partes reexamination set forth in § 1.20(c)(2).

(b) A request for inter partes reexamination must include the following parts:
(1) An identification of the patent by patent number and every claim for which reexamination is requested.

(2) A citation of the patents and printed publications which are presented to provide a substantial new question of patentability.

(3) A statement pointing out each substantial new question of patentability based on the cited patents and printed publications, and a detailed explanation of the pertinency and manner of applying the patents and printed publications to every claim for which reexamination is requested.

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

(5) 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.

(6) A certification by the third party requester that a copy of the request has been served in its entirety on the patent owner at the address 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 of the request must be supplied to the Office.

(7) A certification by the third party requester that the estoppel provisions of § 1.907 do not prohibit the inter partes reexamination.

(8) A statement identifying the real party in interest to the extent necessary for a subsequent person filing an inter partes reexamination request to determine whether that person is a privy.

(c) If an inter partes request is filed by an attorney or agent identifying another party on whose behalf the request is being filed, the attorney or agent must have a power of attorney from that party or be acting in a representative capacity pursuant to § 1.34(a).

(d) If the inter partes request does not meet all the requirements of subsection 1.915(b), the person identified as requesting inter partes reexamination may be so notified and given an opportunity to complete the formal requirements of the request within a specified time. Failure to comply with the notice may result in the inter partes reexamination proceeding being vacated.

I. FEE FOR REQUEST FOR INTER PARTES REEXAMINATION
37 CFR 1.915(a) requires the payment of a fee specified in 37 CFR 1.20(c)(2). See MPEP § 2615 for a discussion of the fee to be paid.
II. REQUIRED ELEMENTS OF REQUEST FOR INTER PARTES REEXAMINATION
37 CFR 1.915(b) sets forth the required elements of a request for inter partes reexamination. The elements are as follows:
"(1) An identification of the patent by patent number and every claim for which reexamination is requested."
The request should identify the patent by stating the patent number. Although not required by rule, it is strongly suggested that the request should also state the patentee and the title of the patent, so that they are available for comparison, in the event there is an error in the typing of the patent number. The patentee who would be stated is the first named inventor on the patent.
The request should clearly identify every claim that requester wants reexamined.
"(2) A citation of the patents and printed publications which are presented to provide a substantial new question of patentability."
The patents and printed publications which are presented in the request to provide a substantial new question of patentability must be listed. A form PTO-1449, or its equivalent, should be provided by the requester as part of the request, and all the art (patents and printed publications) cited would be listed thereon.
"(3) A statement pointing out each substantial new question of patentability based on the cited patents and printed publications, and a detailed explanation of the pertinency and manner of applying the patents and printed publications to every claim for which reexamination is requested."
The request must assert a substantial new question of patentability. A statement which clearly points out what the requester considers to be the substantial new question of patentability which would warrant a reexamination should be included. The statement should apply the cited art (patents and printed publications) to each claim that requester wants reexamined based on prior patents and printed publications. See also MPEP § 2616 and § 2617.
"(4) A copy of every patent or printed publication relied upon or referred to in paragraphs (b)(1) through (3) of this section, accompanied by an English language translation of all the necessary and pertinent parts of any non-English language document."
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 § 2618.
"(5) 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 should be 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.
A copy of any prior disclaimer, certificate of correction, or reexamination certificate issued for the patent should also be included with the request; since these are a part of the patent. Again, the copy must have each page plainly written on only one side of a sheet of paper. See also MPEP § 2619.
"(6) A certification by the third party requester that a copy of the request has been served in its entirety on the patent owner at the address 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 of the request must be supplied to the Office."
The request must include a certification that a copy of the request papers has been served on the patent owner. The certification must set forth the name and address employed in serving patent owner. If service was not possible, a duplicate copy of the request must be supplied to the Office.
"(7) A certification by the third party requester that the estoppel provisions of § 1.907 do not prohibit the inter partes reexamination."
The third party requester must make the certification required by 37 CFR 1.915(b)(7) in order to certify that the requester is not precluded from filing the request for reexamination by: 37 CFR 1.907 and the statute upon which those rules are based (35 U.S.C. 317). See MPEP § 2612.
"(8) A statement identifying the real party in interest to the extent necessary for a subsequent person filing an inter partes reexamination request to determine whether that person is a privy."
The reexamination request must identify the real party in interest who is responsible for filing the reexamination request. This information will be used by future parties requesting reexamination of the same patent, in making the certifications required by 37 CFR 1.915(b)(8).
The request should be as complete as possible, since there is no guarantee that the examiner will consider other art (patents and printed publications) when making the decision on the request.
Form PTO/SB/58, reproduced following this page, is encouraged for use as the transmittal form and cover sheet of a request for inter partes reexamination. The use of this form is encouraged; however, its use is not a requirement of the law nor of the rules. Following the Form PTO/SB/58, is a sample of a statement on which the request for inter partes reexamination is based, which statement would be attached to the Form PTO/SB/58 cover sheet (that would be filled out by requester).

Attachment to Request for
Inter Partes Reexamination Transmittal Form,
providing information
as to Patent No. 9,999,999

Sir:

Inter Partes reexamination under 35 U.S.C. 311 - 318 and 37 CFR 1.913 is requested of United States patent number 9,999,999 which issued on July 7, 2001, to Joseph Smith from an application filed November 29, 1999. This patent is still enforceable.

A : 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 594,225 to Berridge which is listed on the attached Information Disclosure 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.

B : Explanation of pertinency and manner of applying cited prior art to every claim for which reexamination is requested.

Claims 1-3 of the Smith patent are considered to be fully anticipated under 35 U.S.C. 102 by the prior art patent to Berridge.

Claim 3 of the Smith patent, which is more specific than claims 1 and 2 in all features, is set forth below with an explanation as to how the prior art patent to Berridge meets all the recited feature.

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)

"of bosses arranged at an angle to and offset fromthe plane of the shear blades" ( "bosses" as used in the Smith claim is used to mean a projection. The dies 6 and 7 of the Berridge prior art patent document are arranged at the same angle to the plane of the shear blades and arearranged at an angle in the same manner as shown in the drawing figures of the Smith patent.)

"and crimping dies formed meeting faces of saidbosses" (The dies 6 and 7 (bosses) of Berridge have meeting die-faces 12 and 13 (page 1, line 63) for performing crimping operations (page 1, lines 70-74).)

Claim 4 of the Smith patent is considered to be unpatentable under 35 U.S.C. 103 in view of the prior art Swiss patent document to Hotopp and further in view of the prior art magazine publication on page 169 of the October 16, 1950, issue of American Machinist magazine.

Claim 4 of Smith reads as quoted below:

"In a cutting and crimping tool," (The prior art Swiss patent document to Hotopp discloses cutting jaws (column 1, line 8) and dies "b" and "c" which may be used for crimping.)

"the combination of a pair of pivoted handles" (elements "a" and "e" in the prior art document to Hotopp.)

"with cutting jaws at one end and crimping dies
on the opposite side of the pivot" (The prior art document to Hotopp discloses cutting jaws (column 1 line 8) and crimping dies "b" and "c" on the opposite side of pivot "d " from the cutting jaws.)

"and rounded prongs projecting from said cutting jaws" (Rounded prongs are not specifically disclosed by Hotoppbut are shown to be old in the art by the illustration in "American Machinist" magazine under the title "Double-Purpose Pliers Donít Break Insulation" .To provide the cutting jaws of Hotopp with rounded prongs as shown in the "American
Machinist" magazine is considered to be a matter which would have been obvious to a person havingordinary skill in the art at the time the invention was made.)

C : Statement pointing out substantial new question of patentability:

The prior art documents referred to above were not of record in the file of the Smith patent. Since claims 1-4 in the Smith patent are not patentable over these prior art documents, a substantial new question of patentability is raised. Further, these prior art documents are closer to the subject matter of Smith than any prior art which was cited during the prosecution of the Smith patent. These prior art documents provide teachings not provided during the prosecution of the Smith patent.

( Signed )
Kenneth M. SchorAttorney for Requester
Reg. No. 29760

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2614 Content of Request for - 2600 Optional Inter Partes Reexamination

2614 Content of Request for Inter Partes Reexamination [Added R-2]

37 CFR 1.915 Content of request for inter partes reexamination.

I. FEE FOR REQUEST FOR INTER PARTES REEXAMINATION

II. REQUIRED ELEMENTS OF REQUEST FOR INTER PARTES REEXAMINATION

	Attachment to Request for Inter Partes Reexamination Transmittal Form, providing information as to Patent No. 9,999,999
Sir:
Inter Partes reexamination under 35 U.S.C. 311 - 318 and 37 CFR 1.913 is requested of United States patent number 9,999,999 which issued on July 7, 2001, to Joseph Smith from an application filed November 29, 1999. This patent is still enforceable. A : 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 594,225 to Berridge which is listed on the attached Information Disclosure 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. B : Explanation of pertinency and manner of applying cited prior art to every claim for which reexamination is requested. Claims 1-3 of the Smith patent are considered to be fully anticipated under 35 U.S.C. 102 by the prior art patent to Berridge. Claim 3 of the Smith patent, which is more specific than claims 1 and 2 in all features, is set forth below with an explanation as to how the prior art patent to Berridge meets all the recited feature.
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)
"of bosses arranged at an angle to and offset fromthe plane of the shear blades"	( "bosses" as used in the Smith claim is used to mean a projection. The dies 6 and 7 of the Berridge prior art patent document are arranged at the same angle to the plane of the shear blades and arearranged at an angle in the same manner as shown in the drawing figures of the Smith patent.)
"and crimping dies formed meeting faces of saidbosses"	(The dies 6 and 7 (bosses) of Berridge have meeting die-faces 12 and 13 (page 1, line 63) for performing crimping operations (page 1, lines 70-74).)
Claim 4 of the Smith patent is considered to be unpatentable under 35 U.S.C. 103 in view of the prior art Swiss patent document to Hotopp and further in view of the prior art magazine publication on page 169 of the October 16, 1950, issue of American Machinist magazine.
Claim 4 of Smith reads as quoted below:
"In a cutting and crimping tool,"	(The prior art Swiss patent document to Hotopp discloses cutting jaws (column 1, line 8) and dies "b" and "c" which may be used for crimping.)
"the combination of a pair of pivoted handles"	(elements "a" and "e" in the prior art document to Hotopp.)
"with cutting jaws at one end and crimping dies on the opposite side of the pivot"	(The prior art document to Hotopp discloses cutting jaws (column 1 line 8) and crimping dies "b" and "c" on the opposite side of pivot "d " from the cutting jaws.)
"and rounded prongs projecting from said cutting jaws"	(Rounded prongs are not specifically disclosed by Hotoppbut are shown to be old in the art by the illustration in "American Machinist" magazine under the title "Double-Purpose Pliers Donít Break Insulation" .To provide the cutting jaws of Hotopp with rounded prongs as shown in the "American Machinist" magazine is considered to be a matter which would have been obvious to a person havingordinary skill in the art at the time the invention was made.)
C : Statement pointing out substantial new question of patentability:
The prior art documents referred to above were not of record in the file of the Smith patent. Since claims 1-4 in the Smith patent are not patentable over these prior art documents, a substantial new question of patentability is raised. Further, these prior art documents are closer to the subject matter of Smith than any prior art which was cited during the prosecution of the Smith patent. These prior art documents provide teachings not provided during the prosecution of the Smith patent.
	( Signed ) Kenneth M. SchorAttorney for Requester Reg. No. 29760