What should an examiner do if they find claims patentable in a reexamination?
If an examiner finds claims patentable during a reexamination, they should follow the guidance provided in MPEP 2262:
“If the examiner concludes in any Office action that one or more of the claims are patentable over the cited patents or printed publications, the examiner should indicate why the claim(s) is/are clearly patentable in a manner similar to that used to indicate reasons for allowance (MPEP § 1302.14). If the record is clear why the claim(s) is/are clearly patentable, the examiner may refer to the particular portions of the record which clearly establish the patentability of the claim(s).”
In practice, this means the examiner should:
- Clearly state which claims are found patentable
- Provide reasons for patentability, similar to reasons for allowance
- Reference specific parts of the record that support patentability
- Ensure the explanation is clear and comprehensive
This approach helps maintain transparency in the reexamination process and provides a clear record of the examiner’s reasoning.
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