How should an examiner handle claim charts in a reexamination Office action?
When handling claim charts in a reexamination Office action, examiners should follow these guidelines from MPEP 2262:
“Where the request for reexamination includes material such as a claim chart to explain a proposed rejection in order to establish the existence of a substantial new question of patentability, the examiner may bodily incorporate the claim chart (or other material) within the Office action. The examiner must, however, carefully review the claim chart (or other material) to ensure that any items incorporated in a statement of the rejection clearly and completely address the patentability of the claims.”
In essence, examiners can include claim charts from the reexamination request in their Office action, but they must:
- Carefully review the chart for accuracy and completeness
- Ensure the incorporated material fully addresses claim patentability
- Use the chart to support their rejection statement
This approach helps maintain clarity and thoroughness in the reexamination process.
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