How should a patent owner respond to rejections in an inter partes reexamination?

In an inter partes reexamination, a patent owner should respond to rejections by providing a clear and specific rebuttal. According to MPEP 2666:

“Any request for reconsideration must be in writing and must distinctly and specifically point out each supposed error in the examiner’s action. A general allegation that the claims define a patentable invention, without specifically pointing out how the language of the claims patentably distinguishes them over the references, is inadequate and is not in compliance with 37 CFR 1.111(b).”

To properly respond, the patent owner should:

• Explain how and why the claims define over the references
• Address why any rejections made under 35 U.S.C. 112 are incorrect or inapplicable
• Provide reasons for patentability
• If necessary, submit amendments to the claims and/or specification
• Consider submitting affidavits under 37 CFR 1.131(a) or 1.132, if appropriate

It’s crucial to provide a comprehensive and specific response to each rejection to increase the chances of overcoming the examiner’s objections.

To learn more:

• inter partes reexamination
• patent owner response
• Office action
• rejections