What notices are issued regarding compliance with Portola Packaging in reexaminations?

The MPEP outlines specific notices that should be issued regarding compliance with the Portola Packaging decision in reexaminations ordered before November 2, 2002:

1. If the prosecution of an ongoing reexamination is terminated to comply with Portola Packaging, the Notice of Intent to Issue Ex Parte Reexamination Certificate should state:
   “The prosecution of this reexamination is terminated based on In re Portola Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997). No patentability determination has been made in this reexamination proceeding.”
2. If a previously issued rejection is withdrawn to comply with Portola Packaging, the Office action withdrawing such rejection should state:
   “The rejection(s) based upon _______ is/are withdrawn in view of In re Portola Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997). No patentability determination of the claims of the patent in view of such prior art has been made in this reexamination proceeding.”

These notices ensure clarity in the record regarding the application of Portola Packaging and the status of the reexamination proceeding.

To learn more:

• Portola Packaging
• reexamination notices
• patent procedure
• ex parte reexamination