Can the examiner consider information beyond what the patent owner specified for each claim?
Yes, the examiner has discretion to consider information beyond what the patent owner specified for each claim in a supplemental examination request. According to MPEP 2816.01:
“The examiner, however, has the discretion to determine whether any of the items of information properly submitted with the request raises a SNQ affecting any of the claims for which supplemental examination is requested.”
This means that while the patent owner may request examination of specific claims in light of certain items of information, the examiner can analyze any of the submitted items of information with respect to any of the claims for which supplemental examination is requested. However, the examiner cannot consider claims for which the required explanation under 37 CFR 1.610(b)(5) has not been provided by the patent owner.
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