What are the requirements for a rejection in an Office action during ex parte 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.

In an ex parte reexamination Office action, rejections must meet specific requirements as outlined in MPEP 2262. The key points are:

• Each rejection must be based on patents or printed publications.
• Rejections must clearly explain the reasons for rejection, citing specific sections of the references.
• The examiner must provide a detailed mapping of the claims to the prior art.
• New grounds of rejection must be clearly indicated.

As stated in MPEP 2262: “A rejection based on 35 U.S.C. 102 or 35 U.S.C. 103 should set forth the basis for the rejection, namely, the patents or printed publications relied on, a brief explanation of the pertinent teachings of the patent or publication which support the rejection, and the reasoning used to combine the references (if the rejection is based on a combination of references).”