Can a requester include arguments about non-prior art issues in the statement applying prior art?
No, a requester should not include arguments about non-prior art issues in the statement applying prior art for an inter partes reexamination request. The MPEP 2617 clearly states:
“The statement applying the prior art is not intended as an opportunity for a requester to propose rejections based on 35 U.S.C. 101, 112, 102, and 103 (or 132 and 251 for reissue) or to present arguments relating to public use or on-sale issues.”
The statement should focus solely on how the cited patents and printed publications apply to the claims for which reexamination is requested. Any arguments or proposed rejections based on other grounds should be omitted from this statement.
To learn more:
Topics:
MPEP 2600 - Optional Inter Partes Reexamination,
MPEP 2617 - Statement In The Request Applying Prior Art,
Patent Law,
Patent Procedure