Can new issues be raised in ex parte reexamination?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. Generally, new issues cannot be raised in ex parte reexamination unless they are based on patents or printed publications. The MPEP 2258 states: “Issues other than those indicated in 37 CFR 1.552(c) will not be resolved in a reexamination proceeding.” However, there are some exceptions: New combinations of previously cited prior art may be considered New issues related to subject matter added or deleted during reexamination can be addressed Issues of compliance with 35 U.S.C. 112 may be considered if related to claim amendments It’s important to note that the reexamination must stay within the scope of the original patent grant and cannot introduce new matter. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Prior Art Patents or Printed Publications Must Be Applied Under 102/103 MPEP 2258 Required Rejections Must Be Based on Patents or Printed Publications Only MPEP 2258 Rejection Must Be Based on Prior Art in Ex Parte Reexamination MPEP 2258 Prohibited Rejections Must Be Based on Patents or Publications MPEP 2258 Permitted Prior Art Admissions Must Be Considered in Reexamination MPEP 2258 Questions Raised During Reexamination Must Be Noted MPEP 2258 Prior Art Rejections Based on 35 U.S.C. 102 After March 16, 2013 MPEP 2258 Required Issues Under 35 U.S.C. 112 Not Limited to Reexam Changes MPEP 2258 Permitted Issues Relating to 35 U.S.C. 112 Addressed Only for New Claims MPEP 2258 Rejections Must Rely on Patents or Publications MPEP 2258 Prohibited Other Related FAQs 5 FAQs Collapse How are claims construed in ex parte reexamination? How are claims interpreted in ex parte reexamination? Can double patenting rejections be made in ex parte reexamination? Can the sco...