Can the PTAB recommend claim amendments to make a claim patentable in inter partes reexamination?
No, the Patent Trial and Appeal Board (PTAB) does not have the authority to recommend claim amendments to make a claim patentable in inter partes reexamination. MPEP 2681 explicitly states:
Unlike the practice for applications and ex parte reexaminations, the rules do not provide for the Board in its decision to include a statement that a claim may be patentable in amended form, whereby the patent owner would have the right to amend in conformity with that statement and it would be binding on the examiner in the absence of new references or grounds of rejection.
The reason for this policy is to avoid undue delay in the proceedings. The MPEP further clarifies:
A remark by the Board that a certain feature does not appear in a claim is not to be taken as a statement that the claim is patentable if the feature is supplied by amendment.
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