37 CFR 1.552: Scope of reexamination in ex parte reexamination proceedings

Taken from the Ninth Edition of the MPEP, Revision 07.2022, Published February 2023

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1.552    Scope of reexamination in ex parte reexamination proceedings.

  • (a) Claims in an ex parte reexamination proceeding will be examined on the basis of patents or printed publications and, with respect to subject matter added or deleted in the reexamination proceeding, on the basis of the requirements of 35 U.S.C. 112.
  • (b) Claims in an ex parte reexamination proceeding will not be permitted to enlarge the scope of the claims of the patent.
  • (c) Issues other than those indicated in paragraphs (a) and (b) of this section will not be resolved in a reexamination proceeding. If such issues are raised by the patent owner or third party requester during a reexamination proceeding, the existence of such issues will be noted by the examiner in the next Office action, in which case the patent owner may consider the advisability of filing a reissue application to have such issues considered and resolved.
  • (d) Any statement of the patent owner and any accompanying information submitted pursuant to § 1.501(a)(2) which is of record in the patent being reexamined (which includes any reexamination files for the patent) may be used after a reexamination proceeding has been ordered to determine the proper meaning of a patent claim when applying patents or printed publications.
[46 FR 29186, May 29, 1981, effective July 1, 1981; revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (d) added, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]