Can supplemental responses be filed in ex parte reexamination proceedings?

Supplemental responses in ex parte reexamination proceedings are addressed in 37 CFR 1.111(a)(2). While they are not entered as a matter of right, the Office may enter a supplemental response if it is clearly limited to specific circumstances:

• Cancellation of claims
• Adoption of examiner suggestions
• Placing the proceeding in condition for Notice of Intent to Issue Reexamination Certificate (NIRC)
• Responding to an Office requirement made after the first response
• Correction of informalities
• Simplification of issues for appeal

The MPEP states: “When a supplemental response is filed in sufficient time to be entered into the reexamination proceeding before the examiner considers the prior response, the examiner may approve the entry of a supplemental response if, after a cursory review, the examiner determines that the supplemental response is limited to meeting one or more of the conditions set forth in 37 CFR 1.111(a)(2)(i).“

To learn more:

• supplemental responses
• ex parte reexamination
• patent examination procedure
• Office action responses