MPEP 2811.02
Optional Content

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018

Previous: §2811.01 | Next: §2812

2811.02    Optional Content [R-11.2013]

37 C.F.R. 1.610  Content of request for supplemental examination.

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  • (c) The request may also include:
    • (1) A cover sheet itemizing each component submitted as part of the request;
    • (2) A table of contents for the request;
    • (3) An explanation of how the claims patentably distinguish over the items of information; and
    • (4) An explanation of why each item of information submitted with the request does or does not raise a substantial new question of patentability.

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37 CFR 1.610(c) provides that the request may optionally include the following enumerated elements:

I.    A COVER SHEET

37 CFR 1.610(c)(1) permits the request to include a cover sheet itemizing each component submitted as part of the request. A "component" may be a certificate of mailing, the request, the patent to be examined, an item of information, and any other separate document that is deposited with or as part of the request. Submission of a cover sheet will assist the Office in the review of the request for compliance with the filing date requirements. For example, the Office may readily recognize that certain components listed as submitted on the cover sheet may be missing from the file and quickly contact the patent owner for correction. The Office encourages patent owners to submit a cover sheet with a request for supplemental examination. Use of the form PTO/SB/59 as the cover sheet is particularly encouraged.

II.    A TABLE OF CONTENTS

37 CFR 1.610(c)(2) permits the request to include a table of contents for the request. Submission of a table of contents will provide clarity to the record and also help ensure that the request includes all of the required elements in accordance with 37 CFR 1.610(a) and 37 CFR 1.610(b). In addition, a table of contents will also assist in the initial review of the request to determine if the filing date requirements are met and in the examiner’s analysis of the request during the supplemental examination proceeding.

III.    AN EXPLANATION OF HOW THE CLAIMS PATENTABLY DISTINGUISH OVER THE ITEMS OF INFORMATION

37 CFR 1.610(c)(3) provides that the request may include an explanation of how the claims patentably distinguish over the items of information. This optional discussion should be separately made under a separate subheading such as "Optional Explanation under 37 CFR 1.610(c)(3)." The Office has found that requests that combine the detailed explanation under 37 CFR 1.610(b)(5) with the optional discussion under 37 CFR 1.610(c)(3) typically have a lengthy discussion of why the claims are patentable over the items of information with little to no explanation as to how the item of information is applicable to the claim limitations as required by 37 CFR 1.610(b)(5). By combining the optional discussion with the required detailed explanation, the patent owner runs the risk that the Office will find that the required explanation was not provided, causing the request to be noncompliant, and the loss of the date of the original deposit of the request as the filing date. See MPEP § 2812.02.

IV.    AN EXPLANATION OF WHY EACH ITEM OF INFORMATION SUBMITTED WITH THE REQUEST DOES OR DOES NOT RAISE A SUBSTANTIAL NEW QUESTION OF PATENTABILITY

37 CFR 1.610(c)(4) provides that the request may include an explanation why each item of information does or does not raise a SNQ. Patent owners are encouraged to submit this explanation, which will assist the Office in analyzing the request. If the patent owner does submit this optional content, particularly where the patent owner explains why each item of information does not raise a SNQ, the Office strongly recommends that this optional discussion be separately presented, in the request, from the explanation required by 37 CFR 1.610(b)(5), under a subheading such as "Optional Explanation under 37 CFR 1.610(c)(4) ". See MPEP §§ 2811.01 and 2812.02.

An application data sheet (ADS) under 37 CFR 1.76 cannot be submitted in a supplemental examination proceeding since a supplemental examination proceeding is not an "application."