How are improper grounds for reexamination handled?

Improper grounds for reexamination are those not based on prior art patents or printed publications. The MPEP provides guidance on how to handle such grounds:

“If arguments are presented as to grounds not based on prior art patents or printed publications, such as those based on public use or on sale under 35 U.S.C. 102(b), or abandonment under 35 U.S.C. 102(c) for reexamination proceedings examined under the first-to-invent prior art regime, the examiner should note that such grounds are improper for reexamination and are not considered or commented upon. See 37 CFR 1.552(c).”

In essence, examiners should:

• Identify arguments based on improper grounds
• Note that these grounds are improper for reexamination
• Not consider or comment on these arguments in the decision

To learn more:

• improper grounds
• reexamination
• public use
• on sale
• abandonment