What happens if a requester fails to apply cited prior art to all claims in a reexamination request?
If a requester fails to apply cited prior art to all claims in a reexamination request, those claims not addressed may not be reexamined. The MPEP 2243 states:
If the requester fails to apply the art to certain claims, then the requester is not statutorily entitled to reexamination of such claims. If a request fails to set forth the pertinency and manner of applying the cited art to any claim for which reexamination is requested as required by 37 CFR 1.510(b), that claim will generally not be reexamined.
This requirement stems from 35 U.S.C. 302, which mandates that the request must set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested.
To learn more:
Topics:
MPEP 2200 - Citation Of Prior Art And Ex Parte Reexamination Of Patents,
MPEP 2243 - Claims Considered In Deciding Request Filed Under 35 U.S.C. 302,
Patent Law,
Patent Procedure