What are the requirements for a rejection in an Office action during ex parte reexamination?
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).”
To learn more:
Topics:
MPEP 2200 - Citation Of Prior Art And Ex Parte Reexamination Of Patents,
MPEP 2262 - Form And Content Of Office Action,
Patent Law,
Patent Procedure