MPEP 2816.01
Claims Considered in Making the Determination

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

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2816.01    Claims Considered in Making the Determination [R-11.2013]

The claims of the patent in effect at the time of the determination will be the basis for deciding whether "a substantial new question of patentability" (SNQ) is present. See 37 CFR 1.620(a). In a supplemental examination proceeding, the determination will be limited to a review of the claim(s) for which supplemental examination is requested. The Office will generally not initiate supplemental examination of any patent claims for which supplemental examination was not requested by the patent owner.

37 CFR 1.610(b)(5) requires that the request must include "[a] separate, detailed explanation of the relevance and manner of applying each item of information to each claim of the patent for which supplemental examination is requested." If the patent owner fails to explain how any of the items of information may be applied to a patent claim, then the patent owner is not entitled to supplemental examination of that claim. If the patent owner does not provide an explanation of how an item of information may be applied to every claim requested to be examined in view of that item, the patent owner is not entitled to a determination on claims for which the required explanation was not provided. For example, if the patent owner requests supplemental examination of claims 1-10 in view of the Fisher article, but only provides a separate, detailed explanation of the manner of applying the Fisher article to claims 1-5, then the patent owner is not entitled to a determination on claims 6-10, for which the required explanation was not provided. In such instances, a notice of noncompliant supplemental examination request should be mailed by the Office. See MPEP § 2812.02.

If the examiner determines that a SNQ affecting a patent claim has been raised by at least one of the items of information submitted as part of the request, reexamination will be ordered under 35 U.S.C. 257. Once reexamination under 35 U.S.C. 257 is ordered, the Office may, in its sole discretion, reexamine claims other than the claims for which supplemental examination has been requested. See 35 U.S.C. 303(a).

As a general rule, the Office will analyze a claim for which supplemental examination is requested only in light of the item(s) of information identified for that claim. For example, if the patent owner requests supplemental examination of claim 1 in light of three items of information, and requests supplemental examination of claim 5 in light of two other items of information, the Office will analyze, in general, only claim 1 in light of the three items of information identified for claim 1, and only claim 5 in light of the two items of information identified for claim 5. The examiner, however, has the discretion to determine whether any of the items of information properly submitted with the request raises a SNQ affecting any of the claims for which supplemental examination is requested. Based on the facts given in the above example, the examiner has the option to determine whether any of the five items of information provided with the request raises a SNQ affecting either claim 1 or claim 5. In other words, the examiner has the option of analyzing the items of information provided with the request with respect to any of the claims for which supplemental examination is requested, in a manner other than that provided by the patent owner in the request. The patent owner, however, is not entitled to a determination on a claim for which the required explanation under 37 CFR 1.610(b)(5) has not been provided.

Amendments and/or new claims presented in any copending post-patent Office proceeding for the patent to be examined will not be considered nor commented upon when deciding a request for supplemental examination. However, if after reexamination of the patent under 35 U.S.C. 257 has been ordered, a certificate or reissued patent has been issued which amends the claims for which reexamination has been ordered under 35 U.S.C. 257, reexamination should be on the basis of the claims as amended by that certificate or reissued patent, because the certificate becomes part of the patent as of its issue date or the original patent is surrendered and replaced by the reissued patent as of the issue date of the reissued patent.