Can the scope of patent claims be enlarged during ex parte reexamination?
The scope of patent claims cannot be enlarged during ex parte reexamination. The MPEP clearly states:
“35 U.S.C. 305 states that ‘no proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding….'”
A claim is considered to enlarge the scope if it is broader than each and every claim of the patent. If a claim is found to enlarge the scope, it should be rejected under 35 U.S.C. 305. This applies not only to amended claims but also to new claims introduced during reexamination.
To learn more:
Topics:
MPEP 2200 - Citation Of Prior Art And Ex Parte Reexamination Of Patents,
MPEP 2258 - Scope Of Ex Parte Reexamination,
Patent Law,
Patent Procedure