What are the restrictions on a third-party requester’s rebuttal brief in inter partes reexamination?
The restrictions on a third-party requester’s rebuttal brief in inter partes reexamination are specified in MPEP 2678, which cites 37 CFR 41.71(c):
“(1) The rebuttal brief of any requester may be directed to the examiner’s answer and/or the respondent brief of the owner.
(2) The rebuttal brief of a requester may not be directed to the respondent brief of any other requester.
(3) No new ground of rejection can be proposed by a requester.“
These restrictions mean that a third-party requester can only address the examiner’s answer or the patent owner’s respondent brief. They cannot respond to other requesters’ briefs or propose new grounds for rejection. This ensures that the rebuttal brief stays focused on the existing issues and arguments in the reexamination proceeding.
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