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2647 Decision Denying Reexamination [Added R-2] - 2600 Optional Inter Partes Reexamination
2647 Decision Denying Reexamination [Added 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 26.02 should be used as the introductory paragraph in a decision denying reexamination.
¶ 26.02 No New Question of Patentability
No substantial new question of patentability is raised by the present request for inter partes reexamination and the prior art cited therein for the reasons set forth below.
The decision will then indicate, for each patent or publication cited in the request, why the citation:
(A) Is cumulative to the teachings of the art cited in the earlier concluded examination of the patent;
(B) Is 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) Would not be important to a reasonable examiner. Even if the citation is available against the claims and it is not cumulative, it still cannot be the basis for a substantial new question of patentability if the additional teaching of the citation would not be important to a reasonable examiner in deciding whether any claim (of the patent for which reexamination is requested) is patentable; or
(D) Is one which was cited in the record of the patent and is barred by the guidelines set forth in MPEP § 2642, subsection II.A.
The examiner should also, in the decision, respond to the substance of each argument raised by the third party 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 1.906(c).
See MPEP § 2647.01 for an example of a decision denying a request for inter partes reexamination.
The decision denying the request is mailed by the Central Reexamination Unit (CRU), and the file (after scanning) is stored in the CRU, 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 CRU 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 CRU processing is carried out, the reexamination file is given a 420 status and then forwarded by the CRU to the files repository unit for storage with the patent file.
In the files repository unit, 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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