How are inappropriate arguments handled in a patent reexamination?
When dealing with inappropriate arguments in a patent reexamination, examiners should follow the guidance provided in MPEP 2262:
“If arguments are presented which are inappropriate in reexamination, they should be treated in accordance with 37 CFR 1.552(c).”
To handle inappropriate arguments:
- Identify arguments that are outside the scope of reexamination
- Refer to 37 CFR 1.552(c) for proper treatment
- Address only those arguments relevant to patentability based on prior art patents or printed publications
- Explain in the Office action why certain arguments are not considered
This approach ensures that the reexamination remains focused on its intended purpose and scope.
To learn more:
Topics:
MPEP 2200 - Citation Of Prior Art And Ex Parte Reexamination Of Patents,
MPEP 2262 - Form And Content Of Office Action,
Patent Law,
Patent Procedure