How are inappropriate arguments handled in a patent reexamination?

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.

When dealing with inappropriate arguments in a patent reexamination, examiners should follow the guidance provided in MPEP 2262:

“If arguments are presented which are inappropriate in reexamination, they should be treated in accordance with 37 CFR 1.552(c).”

To handle inappropriate arguments:

• Identify arguments that are outside the scope of reexamination
• Refer to 37 CFR 1.552(c) for proper treatment
• Address only those arguments relevant to patentability based on prior art patents or printed publications
• Explain in the Office action why certain arguments are not considered

This approach ensures that the reexamination remains focused on its intended purpose and scope.