How does an examiner handle new grounds of rejection in inter partes reexamination?

In inter partes reexamination, examiners must carefully consider how to handle new grounds of rejection. According to MPEP 2671.01: “An action will not normally close prosecution if it includes a new ground of rejection which was not previously addressed by the patent owner, unless the new ground was necessitated by an amendment.” This means that:…

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How are multiple amendments handled after an Action Closing Prosecution (ACP)?

According to MPEP 2673, when multiple amendments are submitted after an Action Closing Prosecution (ACP), only the first amendment will be considered. The MPEP explicitly states: “Where multiple amendments are submitted after the ACP, all amendments except for the first one will be returned without consideration, since they are improper submissions. Thus, if prosecution is…

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How are affidavits treated after an Action Closing Prosecution (ACP) in inter partes reexamination?

According to MPEP 2673, affidavits submitted after an Action Closing Prosecution (ACP) in inter partes reexamination are treated similarly to amendments submitted after an ACP. The MPEP states: “Affidavits submitted after an ACP are subject to the same treatment as amendments submitted after an ACP. This is analogous to the treatment of affidavits submitted after…

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How does the examiner determine whether to issue an ACP or a final rejection in ex parte reexamination?

The examiner’s decision to issue an Action Closing Prosecution (ACP) or a final rejection in ex parte reexamination depends on specific criteria outlined in the MPEP. According to MPEP 2260: “If the patent owner’s response overcomes all rejections and objections, a Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) should be issued. If…

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