2811.01 Detailed Explanation of the Relevance and Manner of Applying Each Item of Information [R-11.2013]

I. GENERAL

A separate, detailed explanation required by 37 CFR 1.610(b)(5) must include, for each item of information listed pursuant to 37 CFR 1.610(b)(2), an explanation of how the item of information may be applied to the claims for which supplemental examination is requested. The patent owner must explain, for each claim requested to be examined, either (1) what the item of information teaches with respect to that claim, or (2) which teachings contained in the item of information may be considered by an examiner to be important when determining the patentability of that claim.

The explanation should include citations to particular portions or figures in the item of information in which the teachings are located. Ideally, the required explanation can be provided using an appropriately detailed claim chart that compares, limitation by limitation, each claim for which supplemental examination is requested with the teachings of each item of information cited in the request.

A general statement of relevance that is not tied to any particular claim limitation is not sufficient to meet the requirement.

Patent owners are strongly encouraged to specify which claims are to be examined in light of which items of information. If the patent owner desires to request supplemental examination of all of the claims of the patent in light of all of the items of information submitted with the request, the patent owner is encouraged to specifically request, for example, supplemental examination of claims 1-10 (i.e., all of the claims of the patent) in light of, for example, “the following items of information” (after which a list of the items of information is provided). On the other hand, if the patent owner separately lists: 1) the claims for which supplemental examination is requested; and 2) the items of information submitted with the request, but does not specify which of the claims are to be examined in light of which items of information, the request will be taken as a request for the supplemental examination of all of the claims requested in light of each item of information submitted with the request. In either case, the patent owner must provide a separate, detailed explanation of the manner of applying every item of information submitted as part of the request to each claim for which supplemental examination is requested.

The Office will assume that all of the claims identified pursuant to 37 CFR 1.610(b)(4) are requested to be considered in light of every item of information listed under 37 CFR 1.610(b)(2), unless otherwise specified. For example, if, in a request for the supplemental examination of claims 1-10, five items of information are listed, and the patent owner wishes supplemental examination of claims 1-5 based on the first two items of information and supplemental examination of claims 1-10 based on the next three items of information, the patent owner must clearly indicate which claims are requested to be examined in light of which items of information. The patent owner can provide such an indication, for example, by use of the headings in the detailed explanation as discussed below, and/or in a table of contents.

A separate, detailed explanation is also required for each dependent claim for which supplemental examination is requested. If the patent owner wishes to rely upon the explanation of the manner of applying the item of information to the independent claim as the required explanation for the dependent claim, the patent owner should so state. For example, the patent owner may state: “Because dependent claims 2-5 each include all of the limitations of independent claim 1, the patent owner relies upon the required explanation under 37 CFR 1.610(b)(5) of the manner of applying the Fisher article to independent claim 1, provided above, as the required explanation under 37 CFR 1.610(b)(5) for dependent claims 2-5.” The patent owner is reminded, however, that if the patent owner relies on a proper, detailed explanation of an independent claim as the detailed explanation for the dependent claims, then a review of the dependent claims may be limited to the detailed explanation of the independent claim provided by the patent owner.

If the request does not include an explicit statement incorporating the explanation for the independent claim as the required explanation for the dependent claims, or if the request fails to include separate explanations for the dependent claims, the Office may mail a notice of noncompliant request to inform the patent owner of the deficiency. See MPEP § 2812.02.

The Office does not recommend that the detailed explanation under 37 CFR 1.610(b)(5) be combined with an optional discussion, such as a discussion under 37 CFR 1.610(c)(3) of how the claims patentably distinguish over the item of information. See MPEP § 2812.02. Although the rules do not prevent the patent owner from combining such optional discussions within the detailed explanation, the Office recommends that this optional discussion be made under a separate subheading such as “Optional Explanation under 37 CFR 1.610(c).” The Office has found that requests that combine the detailed explanation with the optional discussion typically include a lengthy discussion of why the claims are patentable over the items of information, or why the items of information do not raise a SNQ, 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 optional discussions with the required detailed explanation, the patent owner runs the risk of obscuring the “detailed explanation.” Such an obscured request could potentially result in the Office finding the “detailed explanation” was not provided, and therefore lead to a determination that the request failed to comply with the filing date requirements, and the loss of the date of the original deposit of the request as the filing date.

Use of headings and subheadings in the detailed explanation section of the supplemental examination request is encouraged. For example, headings that identify each item of information and which claims are being discussed are excellent tools to ensure clarity in the explanations. In addition, under each heading, the Office highly recommends using separate subheadings for each independent claim and its associated dependent claims, if applicable.

For example, the patent owner may provide a series of statements which identify which claims are to be examined in light of each item of information listed under 37 CFR 1.610(b)(2). The statements do not need to take the form of a proposed rejection, but should be sufficiently clear to determine the scope of the request. These statements will NOT be construed as an admission of unpatentability. These statements would only indicate that the patent owner is requesting that the Office consider whether certain issues may be raised by each item of information with respect to specific claims. If the patent owner is aware, or is made aware, that an item of information may raise particular patentability issue(s) (e.g., anticipation, obviousness, written description, enablement, etc…), the patent owner may identify these issues in the explanation under 37 CFR 1.610(b)(5). These statements would provide a focused review on the potential issues and explicit consideration of those potential issues on the record.

The following are examples of statements that may be set forth as headings in the detailed explanation:

Supplemental examination is requested for claims 1-10 of the ‘123 patent in view of the Fisher article.

The patent owner requests the Office to consider whether the Fisher article raises a SNQ affecting claims 1, 4, 7, and 15 of the ‘123 patent.

Does Smith raise a SNQ affecting claims 1-3 and 5-7?

Does the Byrd declaration raise issues under 35 U.S.C. 101 affecting claims 1-7?

Does the Byrd declaration raise issues under 35 U.S.C. 112 affecting claims 2 and 8?

Are claims 1-5 entitled to the earlier filing date of March 5, 2008 in light of the Wolf declaration?

Patent owners are encouraged to be as comprehensive as possible in the explanation. This allows the patent owner to frame any potential issues, and assists the examiner in focusing on these potential issues to better determine if a SNQ is, or is not, raised. See also the guidance provided in MPEP §§ 2214 and 2217 for ex parte reexamination proceedings.

Any failure to provide the required explanation for any item of information, or for any claim for which supplemental examination is requested, will be identified in a “Notice of Noncompliant Supplemental Examination Request (37 CFR 1.610(d)).” See MPEP § 2812.02. Even if the request fails to strictly comply with the detailed explanation requirement, the Office may, in its sole discretion, accept the request if it is readily understood from the explanation provided in the request how the each of the items of information submitted with or as part of the request may be applied to each of the claims for which supplemental examination is requested.

II. REQUIREMENT CANNOT BE SATISFIED BY INCORPORATING BY REFERENCE A PAPER FROM ANOTHER PROCEEDING OR BY RELYING ON A PAPER BY A THIRD PARTY

The requirement for a detailed explanation may not be met by incorporating by reference a paper from another proceeding, or by relying on a paper of a third party, which is submitted with the request.

A request for supplemental examination must stand on its own. A request for supplemental examination cannot be made, and the requirements for a detailed explanation pursuant to 37 CFR 1.610(b)(5) cannot be satisfied, by incorporating by reference a paper from another proceeding. A paper filed in another proceeding must comply with the regulations and procedures set for that proceeding, and would address the issues specific to that proceeding, not to the present supplemental examination proceeding. A procedure which would require the examiner to sort through a paper filed in another proceeding and determine which issues may be raised and treated in a supplemental examination proceeding would frustrate the Office’s ability to conclude the supplemental examination proceeding within three months of the filing date of the request, as required by 35 U.S.C. 257. For example, the patent owner cannot rely on an Office action from another proceeding as the detailed explanation required by 37 CFR 1.610(b)(5) of the manner of applying the references cited in the Office action. Incorporation by reference would require Office staff to review any incorporated papers (such as, e.g., an Office action) to see if the papers happen to include a discussion of each item of information identified in the present supplemental examination proceeding and explain, in detail, how each item of information may be applied to each claim for which supplemental examination is requested, in order to determine if the filing date requirements are met. Such a procedure would absorb a greater portion of the three-month time period for conducting the supplemental examination and reduce the time available for a full and comprehensive analysis of each item of information submitted as part of the request. For these reasons, each request must stand on its own. The requirement for a detailed explanation cannot be satisfied by incorporating by reference a paper from another proceeding.

The detailed explanation must reflect the opinion of the patent owner, and not that of a third party (including a patent examiner). 35 U.S.C. 257(a) specifies that a patent owner may request supplemental examination. The statute does not authorize the Office to accept a request for supplemental examination by a party other than the patent owner. The patent owner may not file papers on behalf of a third party and thus circumvent the intent of the legislation for supplemental examination. For this reason, the detailed explanation required under 37 CFR 1.610(b)(5) must be drafted by the patent owner, and must reflect the opinion of the patent owner, i.e., what the patent owner believes is the relevance of each item of information, and what the patent owner believes is the manner of applying each item of information to each claim of the patent for which supplemental examination is requested. The patent owner may not rely on a paper filed by a third party (including a paper drafted by a patent examiner) to provide the detailed explanation required by 37 CFR 1.610(b)(5) because the paper filed by the third party does not necessarily reflect the opinion of the patent owner.

If the patent owner wishes to have the examiner consider, in a supplemental examination proceeding, an Office action from another application or proceeding, the patent owner must separately list the Office action and any documents mentioned in the Office action as items of information pursuant to 37 CFR 1.610(b)(2), and provide, when required under 37 CFR 1.610(b)(7), copies of each item of information. In addition, the patent owner must supply its own detailed explanation under 37 CFR 1.610(b)(5), of how the Office action and any documents mentioned in the Office action may be applied to the claims for which supplemental examination is requested.

III. DETAILED EXPLANATION OF INFORMATION LIMITED TO CORRECTION OF FACTUAL INFORMATION

If the request includes an item of information limited to a correction of factual information, such as a foreign priority or domestic benefit claim, or the common ownership of the claimed invention, the request should also include one or more additional item(s) of information that potentially provide evidence that the patentability of the claims depends upon the factual information to be corrected. See MPEP § 2809.01. In such a case, the request must include a detailed explanation required under 37 CFR 1.610(b) of how each of the additional item(s) of information may be applied to the claims for which supplemental examination is requested. For example, if the patent owner wishes to correct the effective filing date of the patent to be examined by claiming the benefit of an earlier filing date of, e.g., a parent patent, the request should include a copy of the parent patent as a first item of information, and a copy of an intervening reference as a second item of information. The patent owner must include in the request a detailed explanation of how the intervening reference may be applied to the claims of the patent to be examined if the effective filing date remains unchanged and is not corrected. As another example, if the patent owner wishes to delete a benefit claim, or correct an earlier-obtained (incorrect) benefit claim in order to properly claim the benefit of a later filing date of a parent patent, the request should include, as separate items of information, a copy of any parent patent document on which the later (corrected) effective filing date is based, and a copy of an intervening reference which would pre-date the effective filing date of the patent to be examined, if the domestic benefit claim were deleted or corrected to an appropriate later date. In this case, the patent owner must include in the request a detailed explanation of how the intervening reference may be applied to the patent claims if the effective filing date of the patent to be examined is corrected to the later date.

The request must also include an explanation of how the patent owner is entitled to the corrected factual information, where appropriate. For example, if the patent owner informs the Office that the effective filing date of the patent to be examined should reflect an earlier filing date of a parent patent, then the patent owner must also include in the request a detailed explanation of how the patent owner is entitled to the earlier effective filing date, by, for example, explaining how each claim limitation is supported by the parent patent. If, however, the patent owner merely wishes to delete a foreign priority or domestic benefit claim, an explanation of how the patent owner is entitled to the (new) effective filing date, if the domestic benefit claim (or, where appropriate, the foreign priority claim) is deleted, is not required.