Question 1

How are second or subsequent reexamination requests handled during a pending reexamination?

Accepted Answer

When a second or subsequent request for ex parte reexamination is filed under 35 U.S.C. 302 while a first ex parte reexamination is pending, the USPTO considers whether the new request raises a different substantial new question of patentability. The MPEP states:

"If the requester includes in the second or subsequent request prior art which raised a substantial new question in the pending reexamination, reexamination should be ordered only if the prior art cited raises a substantial new question of patentability which is different from that raised in the pending reexamination proceeding."

If the new request raises the same substantial new question of patentability as the pending reexamination, it will be denied. The decision is based on the claims in effect at the time of the determination (37 CFR 1.515(a)).

In cases where a different substantial new question of patentability is raised for some claims but not others, the request may be granted in part. The second or subsequent requester must independently provide a substantial new question of patentability different from that raised in the pending reexamination for the claims in effect at the time of the determination.

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Question 2

How does a prior adverse decision by the USPTO affect the determination of a substantial new question of patentability?

Accepted Answer

A prior adverse decision by the USPTO can significantly impact the determination of a substantial new question of patentability (SNQ) in a reexamination proceeding. The MPEP provides guidance on this issue:

Prior adverse decisions on the same prior art: If the USPTO has previously made an adverse decision on patentability based on the same prior art, it usually means that an SNQ is present.
Abandoned reissue applications: An adverse decision from an abandoned reissue application, where the claim was rejected without being disclaimed, can indicate the presence of an SNQ.
Prior adverse decisions on other grounds: If there was a prior adverse final decision by the Director of the USPTO or the Patent Trial and Appeal Board on a reissue application for the same patent, it will be considered when determining if an SNQ exists. However, if this decision was based on grounds other than patents or printed publications, it won't be considered for the SNQ determination.

It's important to note that each case is evaluated individually, and the specific circumstances of the prior adverse decision will be taken into account when determining whether an SNQ exists.

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Question 3

Are oral hearings in inter partes reexamination appeals open to the public?

Accepted Answer

Generally, oral hearings in inter partes reexamination appeals are open to the public as observers, subject to the Board's admittance procedures. However, there is a process by which a hearing can be closed to the public.

According to MPEP 2680: "Where the appeal involves reexamination proceedings, oral hearings are open to the public as observers (subject to the admittance procedures established by the Board), unless one of the appellants and/or the respondents (A) petitions under 37 CFR 41.3 that the hearing not be open to the public, (B) presents sufficient reasons for such a request, (C) pays the petition fee set forth in 37 CFR 41.20(a), and (D) the petition is granted."

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Question 4

Are oral hearings in patent reexamination appeals open to the public?

Accepted Answer

Generally, oral hearings in patent reexamination appeals are open to the public as observers. However, the appellant can request a closed hearing under certain conditions. According to MPEP 2276:

"Where the appeal involves reexamination proceedings, oral hearings are open to the public as observers (subject to the admittance procedures established by the Board), unless the appellant (A) petitions under 37 CFR 41.3 that the hearing not be open to the public, (B) presents sufficient reasons for such a request, (C) pays the petition fee set forth in 37 CFR 41.20(a), and (D) the petition is granted."

This means that while hearings are typically public, the appellant can petition for a closed hearing if they have sufficient reasons and pay the required fee.

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Question 5

How does the level of predictability in the art affect enablement in patent applications?

Accepted Answer

How does the level of predictability in the art affect enablement in patent applications?

The level of predictability in the art is a crucial factor in determining whether a patent application meets the enablement requirement. According to MPEP 2164, "The amount of guidance or direction needed to enable the invention is inversely related to the amount of knowledge in the state of the art as well as the predictability in the art."

Key points on predictability and enablement:

In predictable arts (e.g., mechanical or electrical fields), less disclosure may be required to satisfy enablement.
In unpredictable arts (e.g., biotechnology or chemistry), more detailed disclosure is typically necessary.
The level of predictability affects the amount of direction or guidance needed in the specification.
It also influences the acceptability of prophetic examples or broad claims.

For example, in unpredictable arts, the specification may need to provide more working examples, specific instructions, or empirical data to ensure that one skilled in the art can make and use the invention without undue experimentation.

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Question 6

How can later publications be used to show the level of ordinary skill in the art?

Accepted Answer

Later publications, which do not qualify as prior art due to their post-dating of the claimed invention, can still be valuable in patent examination. According to MPEP 2124:

"References which do not qualify as prior art because they postdate the claimed invention may be relied upon to show the level of ordinary skill in the art at or around the time the invention was made."

This means that examiners and attorneys can use these later publications to provide context about the general knowledge and capabilities in the field at the time of the invention. This can be particularly useful when assessing non-obviousness or inventive step, as it helps establish what would have been considered routine or expected by those skilled in the art at the relevant time.

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Question 7

What is the Scientific and Technical Information Center (STIC) and its role in patent examination?

Accepted Answer

The Scientific and Technical Information Center (STIC) is a crucial resource for patent examiners at the USPTO. According to MPEP 901.06(a), STIC's main functions include:

Maintaining Electronic Information Centers (EICs) in each Technology Center
Assisting patent examiners with prior art searches
Providing document delivery services
Offering access to foreign patent copies and translations
Providing access to non-patent literature in electronic and print formats

STIC's resources are essential for examiners to determine whether claims in patent applications are anticipated by prior art under 35 U.S.C. 102 or obvious under 35 U.S.C. 103.

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Question 8

How are assignment records made accessible to the public?

Accepted Answer

The USPTO makes assignment records accessible to the public in several ways, as described in 37 CFR 1.12:

Separate assignment records for patents and trademarks are maintained and are open to public inspection.
Assignment records, digests, and indexes for patents are available on the USPTO website.
Images of assignment documents recorded from June 1998 onwards are viewable on the Office website.
For earlier records, the public can place an order to view images.

The MPEP notes: 'The Office will not open only certain parts of an assignment document to public inspection. If such a document contains two or more items, any one of which, if alone, would be open to such inspection, then the entire document will be open.'

However, documents relating only to pending unpublished applications are not open to public inspection.

Question 9

How does MPEP 901 guide patent examiners in their prior art search?

Accepted Answer

While MPEP 901 itself is brief, it provides crucial guidance to patent examiners for their prior art search by referencing other key sections of the MPEP. The section states:

"Note 37 CFR 1.104(a)(1) in MPEP § 707. See also MPEP § 2121 - § 2129."

This guidance directs examiners to:

Review MPEP § 707, which details how to cite prior art during examination
Consult MPEP § 2121 - § 2129, which provide comprehensive information on various aspects of prior art
Consider the requirements of 37 CFR 1.104(a)(1), which mandates a thorough study of the application and investigation of available prior art

By referring to these resources, MPEP 901 ensures that examiners have a structured approach to searching for and evaluating prior art, promoting consistency and thoroughness in the patent examination process.

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Question 10

What are the key components for citing patent documents in international search reports?

Accepted Answer

When citing patent documents in international search reports, examiners must include several key components as per MPEP 1851:

The two-letter country code of the issuing or publishing entity
The standard code identifying the kind of patent document
The document number
The name of the patentee or applicant
The publication date
Relevant page numbers, columns, lines, or paragraph numbers

For example:

"JP 10-105775 A (NCR INTERNATIONAL INC.) 24 April 1998 (24.04.1998) paragraphs 26 to 30."

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