How does the examiner handle amendments submitted after final rejection in reexamination?

When handling amendments submitted after final rejection in reexamination, the examiner follows specific guidelines: The first proposed amendment after final action in a reexamination proceeding will be given sufficient consideration to determine whether it places all the claims in condition where they are patentable and/or whether the issues on appeal are reduced or simplified. If…

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What happens after a final rejection in a reexamination proceeding?

After a final rejection in a reexamination proceeding, the patent owner’s rights to unrestricted further prosecution are limited. The MPEP states: Once a final rejection that is not premature has been entered in a reexamination proceeding, the patent owner no longer has any right to unrestricted further prosecution. Amendments submitted after final rejection are subject…

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How are amendments treated in terminated reexamination proceedings?

In terminated reexamination proceedings, amendments are treated as follows: Amendments submitted during the reexamination proceeding are not printed or entered into the patent. The MPEP 2278 states: “The amendments are merely placed in the reexamination file wrapper.“ This treatment applies to all amendments, including those that were entered, not entered, and/or proposed during the reexamination…

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Can amendments be submitted with a supplemental examination request?

No, amendments cannot be submitted with a supplemental examination request. MPEP 2809 clearly states: “No amendment may be filed in a supplemental examination proceeding. 37 CFR 1.620(f). Any paper containing an amendment that is filed in a supplemental examination proceeding is an unauthorized paper, and will be expunged from the file if inadvertently entered.” However,…

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Are amendments or new claims considered during supplemental examination?

No, amendments and new claims presented in copending post-patent Office proceedings are not considered during the supplemental examination process. According to MPEP 2816.01: “Amendments and/or new claims presented in any copending post-patent Office proceeding for the patent to be examined will not be considered nor commented upon when deciding a request for supplemental examination.” However,…

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