How should examiners handle third-party requester proposed rejections in inter partes reexamination?

Examiners must carefully consider and address all third-party requester proposed rejections in inter partes reexamination. MPEP 2660 provides clear guidance on this matter:

“The examiner should not refuse to adopt a rejection properly proposed by the requester as being cumulative to other rejections applied. Rather, any such proposed rejection must be adopted to preserve parties’ appeal rights as to such proposed rejections.”

Key points for examiners:

• Adopt all properly proposed rejections, even if they seem cumulative
• Provide clear reasons for any proposed rejections not adopted
• Address the substance of each argument raised in the reexamination request
• Incorporate claim charts or other material from the request if relevant to the rejection

This approach ensures that all parties’ rights are preserved and that the examination is thorough and transparent.

To learn more:

• third-party requester
• proposed rejections
• inter partes reexamination
• patent examination