Can a reexamination be ordered for claims not specifically requested in the inter partes reexamination request?

Generally, the USPTO will limit its examination to the claims specifically requested for reexamination. However, the Office retains discretion to reexamine other claims. The MPEP states: “The Office’s determination in both the order for reexamination and the examination stage of the reexamination will generally be limited solely to a review of the claim(s) for which…

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What types of submissions are allowed under 37 CFR 1.501(a)?

37 CFR 1.501(a) allows for two types of submissions: Prior art submissions: These include patents and printed publications that the submitter believes are pertinent and applicable to the patent, and may have a bearing on the patentability of any claims. Patent owner statements: These are statements made by the patent owner in federal court proceedings…

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How does the identification of a single inoperative embodiment affect claim enablement?

The identification of a single inoperative embodiment among many operable embodiments does not necessarily render a claim broader than the enabled scope. The MPEP 2164.08(b) references the In re Angstadt case: “A disclosure of a large number of operable embodiments and the identification of a single inoperative embodiment did not render a claim broader than…

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What is the significance of “transitional phrases” in patent claim construction?

Transitional phrases play a crucial role in patent claim construction by defining the scope of the claimed invention. According to MPEP 2111.03, transitional phrases “define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim.” The significance of transitional phrases includes:…

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What is the significance of “identical” claims in patent reexamination and intervening rights?

What is the significance of “identical” claims in patent reexamination and intervening rights? The concept of “identical” claims is crucial in determining whether intervening rights apply in patent reexamination. According to MPEP 2293: “A claim of the patent which is substantially identical to a claim of the original patent (for example, amended to improve clarity)…

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What is the scope of inter partes reexamination?

The scope of inter partes reexamination is defined by 37 CFR 1.906, which states: Claims will be examined based on patents or printed publications. For subject matter added or deleted during reexamination, claims will be examined based on 35 U.S.C. 112 requirements. Claims cannot enlarge the scope of the original patent claims. Issues outside of…

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