2816.03 Content of the Determination [R-07.2022]

Created On
byChhabra Law Firm

35 U.S.C. 257  Supplemental examinations to consider, reconsider, or correct information.

  • (a) REQUEST FOR SUPPLEMENTAL EXAMINATION.—A patent owner may request supplemental examination of a patent in the Office to consider, reconsider, or correct information believed to be relevant to the patent, in accordance with such requirements as the Director may establish. Within 3 months after the date a request for supplemental examination meeting the requirements of this section is received, the Director shall conduct the supplemental examination and shall conclude such examination by issuing a certificate indicating whether the information presented in the request raises a substantial new question of patentability.

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37 CFR 1.620 Conduct of supplemental examination proceeding.

  • (a) Within three months after the filing date of a request for supplemental examination, the Office will determine whether a substantial new question of patentability affecting any claim of the patent is raised by any of the items of information presented in the request. The determination will generally be limited to a review of the item(s) of information identified in the request as applied to the identified claim(s) of the patent. The determination will be based on the claims in effect at the time of the determination and will become a part of the official record of the patent.

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Once a determination is made on the request as to whether the items of information raise a substantial new question of patentability (SNQ), the examiner will prepare: (1) the Supplemental Examination Certificate; and (2) the Reasons for Substantial New Question of Patentability Determination (the “reasons document”).

I. THE SUPPLEMENTAL EXAMINATION CERTIFICATE

The supplemental examination certificate is prepared by utilizing a form captioned “Supplemental Examination Certificate.” The form lists all of the items of information properly submitted as part of the supplemental examination request and states whether a SNQ affecting at least one claim of the patent is raised in the request.

Examiners should not initial, sign and date the listing of the items of information (37 CFR 1.610(b)(2)) submitted with the request. This practice is different from the current practice regarding prior art citations in applications or proceedings involving patents. There is no need to initial, sign, and date the listing submitted under 37 CFR 1.610(b)(2) because the supplemental examination certificate includes a citation to each item of information properly submitted as part of the request.

A copy of a supplemental examination certificate indicating that a SNQ affecting at least one claim of the patent is raised in the request, and a copy of a supplemental examination certificate indicating that no SNQ is raised in the request, appear below.

Supplemental examination certificate - New question of patentability - Page 1 of 1.
Supplemental examination certificate - No new question of patentability - Page 1 of 1.

II. THE REASONS FOR SUBSTANTIAL NEW QUESTION OF PATENTABILITY DETERMINATION (REASONS DOCUMENT)

The Reasons for Substantial New Question of Patentability (SNQ) Determination (or “reasons document” ) will typically accompany the supplemental examination certificate. This document will explain, for each item of information, why each item does or does not raise a SNQ. Form paragraph 28.01 should be used as the heading for the reasons document.

A.Where At Least One Substantial New Question of Patentability is Found

If the request is determined to raise at least one SNQ, the supplemental examination certificate will indicate that a SNQ affecting at least one claim of the patent has been raised, and will refer to the reasons document. For each item of information, the reasons document should include:

  • (1) A statement that the item of information, as presented in the request, raises a SNQ, and an identification of the claims for which a SNQ is raised.
  • (2) Where appropriate, a statement that the item of information, as presented in the request, does not raise a SNQ, and an identification of the claims for which a SNQ is not raised.
  • (3) A brief statement of the basis for the determination that a SNQ affecting the identified claims was raised by the item, or was not raised by the item.

Where an item of information is determined to raise a SNQ, but the SNQ is determined to affect less than all of the claims which were requested to be examined in view of the item, the reasons document may also include, in addition to (1) above, an identification of the claims for which a SNQ was not raised by the item, and a brief statement of the basis for that determination.

For each item of information, the examiner need only identify one SNQ (e.g., a teaching that would be important to a reasonable examiner when determining patentability) for each identified claim. The examiner may rely upon a determination that a SNQ is raised for an independent claim as the basis that a SNQ is raised for each dependent claim that incorporates the subject matter of the independent claim, if the dependent claims were also requested to be examined by the patent owner. For example, if the examiner finds that item of information A raises a SNQ for independent claim 1, the examiner may rely upon the explanation of how item A raises a SNQ for claim 1 as the explanation of how item A raises a SNQ for dependent claims 2-10, which were also requested to be examined by the patent owner. Form paragraph 28.03 should be used to explain why an item of information raises a SNQ.

For each item of information, if the examiner determines that a substantial new question of patentability is raised by the item, the reasons document should point out:

  • (A) That the item of information raises a SNQ affecting specific claims of the patent (where the specific claims are listed);
  • (B) The recitation of the specific claim limitation(s) affected by the teaching(s) of the item of information;
  • (C) What the teaching(s) are, and where in the item of information the teaching(s) are to be found;
  • (D) Why a reasonable examiner would consider the teaching(s) to be important in determining the patentability of the specific claim(s) (where the specific claims are listed) for which supplemental examination is being requested; and
  • (E) Where appropriate, whether the item of information is prior art (e.g., due to its issue date or publication date) to specific patent claims (where the specific claims are listed) and, when applicable, the reasons why the item of information is deemed to be available as prior art against the patent claims.

For each item of information, if the examiner determines that a substantial new question of patentability is not raised by the item, the reasons document should point out:

  • (A) That the item of information does not raise a SNQ affecting specific claims of the patent (where the specific claims are listed);
  • (B) The recitation of the specific claim limitation(s), if any, which were discussed in the request with respect to the teaching(s) of the item of information;
  • (C) What the teaching(s) are, if any, and where in the item of information the teaching(s) are to be found;
  • (D) Why a reasonable examiner would not consider the teaching(s) to be important in determining the patentability of the specific claim(s) (where the specific claims are listed) for which supplemental examination is being requested (e.g., why the teaching(s) are cumulative to the teachings considered in the earlier concluded examination or review of the patent, or are not important even though the teaching(s) are not cumulative and are available against the claim);
  • (E) Where appropriate, whether the item of information is available as prior art (e.g., due to its issue date or publication date) against specific patent claims (where specific claims are listed) and, when applicable, the reasons why the item of information is or is not deemed to be available as prior art against the patent claims; and
  • (F) If the item of information is not deemed to be available as prior art against specific patent claims, a further statement, when applicable, that the item does not contain information that raises any other issues of patentability with respect to the specific claims (where the specific claims are listed). For example, a request for the supplemental examination of claims 1-3 includes, as an item of information, a copy of a foreign search report which is determined not to raise any issues of patentability under 35 U.S.C. 101, 102, 103, or 35 U.S.C. 112 affecting claims 1-3. In the reasons document, the examiner should explain why the foreign search report does not qualify as prior art (under, e.g., 35 U.S.C. 102 or 103) against any of claims 1-3, and should also state that the foreign search report does not contain information that raises any other issues of patentability with respect to claims 1-3 of the patent.

Where applicable, the examiner should also explain why an item of information that was cited in the record of the patent is barred by the guidelines set forth in MPEP § 2242, subsection II.A.

Where it is not clear from the patent file or supplemental examination record, the reasons document may optionally include, for each item of information:

  • (i) An explanation that the teaching was not previously considered or addressed in any prior examination or proceeding involving the patent or a final holding of invalidity of the patent by the federal courts; or
  • (ii) An explanation that the teaching, if considered in a previous examination or proceeding of the patent or of the application that became the patent, is presented in a new light, or in a different way, by the arguments presented in the request.

If the examiner determines that an item of information does not raise a SNQ affecting every claim to which the item of information was applied in the request, the examiner should state the claim(s) for which the SNQ was not raised and a brief statement of the reasons why the item did not raise a SNQ affecting the identified claim(s). If the patent owner applied the item of information to an independent claim, but did not apply the item to its dependent claims, the examiner may rely upon a determination that a SNQ is not raised for the independent claim as the basis for the determination that a SNQ is not raised for each dependent claim, for which supplemental examination was also requested, and which incorporates the subject matter of the independent claim. For example, if the patent owner provided a detailed explanation of the manner of applying item of information A to independent claim 11 as required by 37 CFR 1.610(b)(5), and relied on that explanation as the only required explanation for dependent claims 12-21 (for which supplemental examination was also requested), and if the examiner finds that item of information A does not raise a SNQ for independent claim 11, then the examiner may rely upon the explanation of how item A does not raise a SNQ for claim 11 as the explanation for its dependent claims 12-21. Form paragraph 28.02 should be used to explain why an item of information does not raise a SNQ.

The examiner will not decide, and no statement should be made, as to whether the claims are rejected over the items of information. It is unnecessary for the examiner to decide questions of patentability of the claims in a supplemental examination proceeding. The examiner only decides whether there is a SNQ.

B.Where No Substantial New Question of Patentability is Found

If the examiner determines that none of the items of information properly submitted as part of the request raise a SNQ, the supplemental examination certificate will state that no SNQ is raised in the request for supplemental examination, and will refer to the Reasons for Substantial New Question of Patentability Determination (i.e., “the reasons document”). The reasons document should explain why each item of information did not raise a SNQ for every claim to which that item of information was applied in the supplemental examination request. See subsection II.A., above. Form paragraph 28.02 should be used to explain why each item of information does not raise a SNQ.

C.Where the Request Includes Factual Information to be Corrected

Where the request includes an item of information limited to the correction of factual information, the request should also include one or more additional item(s) of information, such as one or more intervening reference(s), that potentially provide evidence that the patentability of the claims depends upon the factual information to be corrected. In such an instance, the item of information may raise a SNQ, depending upon whether the foreign priority or domestic benefit claim is or is not corrected.

Example 1. The request includes a first item of information limited to the addition of a claim for the benefit of an earlier effective filing date, a second item of information which is an intervening reference, and a detailed explanation of how the intervening reference may be applied to the patent claims if the domestic benefit claim remains unchanged, and is not corrected. If the examiner determines that a SNQ is raised by the intervening reference, the examiner should include, in the reasons document, the reasons why the intervening reference raises a SNQ, in accordance with the general guidance set forth above in subsection II.A. If the examiner determines that no SNQ is raised by the intervening reference, the examiner should provide, in the reasons document, the reasons for the determination that the second item of information, i.e., the intervening reference, does not raise a SNQ in accordance with the general guidance set forth above in subsection II.B., even if the domestic benefit claim remains unchanged and is not corrected. The examiner should also provide a statement to the effect that the first item of information, which is limited to the correction of a domestic benefit claim, does not raise a SNQ because the patent owner did not include with the request any additional items of information that cause the patentability of the claim(s) to depend upon the domestic benefit claim, even if the domestic benefit claim remains unchanged and is not corrected.

Example 2. The request includes a first item of information limited to the deletion of a benefit claim, a second item of information which is a reference that pre-dates the effective filing date of the patent if the benefit claim is deleted (i.e., an intervening reference), and a detailed explanation of how the intervening reference may be applied to the patent claims if the benefit claim is deleted. If the examiner determines that a SNQ is raised by the intervening reference if the benefit claim is deleted, the examiner should include, in the reasons document, the reasons why the intervening reference raises a SNQ if the domestic benefit claim is deleted, in accordance with the general guidance set forth above in subsection II.A. If the examiner determines that no SNQ is raised by the intervening reference, the examiner should provide, in the reasons document, the reasons for the determination that the second item of information, i.e., the intervening reference, does not raise a SNQ in accordance with the general guidance set forth above in subsection II.B., even if the domestic benefit claim was deleted. The examiner should also provide a statement to the effect that the first item of information, which is limited to the deletion of the domestic benefit claim, does not raise a SNQ because the patent owner did not include with the request any additional items of information that cause the patentability of the claim(s) to depend upon the domestic benefit claim, even if the domestic benefit claim were to be deleted.

D.Panel Review

After an examiner has made a preliminary determination, the examiner will formulate a draft Supplemental Examination Certificate and a draft Reasons for Substantial New Question of Patentability Determination (i.e., a draft “reasons document”). The examiner will then inform their CRU Supervisory Patent Reexamination Specialist (SPRS) of the preliminary determination. A panel review conference will be convened, and the conference members will review the preliminary determination. See MPEP § 2271.01 for the make-up of the panel. If the conference confirms the examiner’s preliminary determination, the Supplemental Examination Certificate shall be issued by its publication in the Office’s Image File Wrapper System, IFW, which will be viewable in Patent Center. The reasons document will be labeled “Reasons for SNQ Determination” in IFW, and it will generally be available for viewing at the same time as, or shortly after, the issuance of the certificate. The reasons document will be signed by the examiner, with the two other conferees initialing as “conferee” to indicate their presence in the conference.

If the conference does not confirm the examiner’s preliminary determination, the examiner will reevaluate and make appropriate changes to the draft Supplemental Examination Certificate and draft reasons document, in accordance with any agreement reached at the conference.

E.Form Paragraphs for the Reasons for Substantial New Question of Patentability Determination

The following are the form paragraphs that should be used in the Reasons for Substantial New Question of Patentability Determination:

¶ 28.01 Header for Statement of Reasons for Substantial New Question of Patentability Determination

REASONS FOR SUBSTANTIAL NEW QUESTION OF PATENTABILITY DETERMINATION

¶ 28.02 Reasons for Finding No Substantial New Question of Patentability

[1], as presented in the request, does not raise a substantial new question of patentability because [2].

Examiner Note:

  • 1. In bracket 1, insert the name or description, as appropriate, for the item of information. For example, a patent or patent application publication may be designated using the name of the patentee or first-named inventor, such as “the Jones patent,” “the Jones patent application publication,” or the number of the patent or patent application publication. A non-patent literature document may be designated by the name of the author, such as the “the Sherwood publication” and the date of the publication, if desired. A sales receipt or invoice should be designated using the date of the receipt, and any appropriate descriptive information, such as “the March 11, 2011, BigBoxStore sales receipt,” or “the April 1, 2011 XYZ Corporation invoice.” An affidavit or declaration should be designated using the name of the declarant and the date of the affidavit or declaration, such as “the Schmidt declaration dated January 20, 2012.” A transcript of an audio or video recording should be designated using the title of the recording and the date of the recording, if applicable, such as “the transcript of the September 16, 2012 XYZ Corporation Marketing Video.” A discussion within the body of the request regarding a potential issue under 35 U.S.C. 101 may be designated, for example, as “the discussion on pages 7-11 of the request regarding a potential issue under 35 U.S.C. 101.”
  • 2. In bracket 2, insert the reasons for the determination that the item of information does not raise a substantial new question of patentability.

¶ 28.03 Reasons for Finding A Substantial New Question of Patentability

[1], as presented in the request, raises a substantial new question of patentability affecting patent claim(s) [2] because [3].

Examiner Note:

  • 1. In bracket 1, insert the name or description, as appropriate, for the item of information. For example, a patent or patent application publication may be designated using the name of the patentee or first-named inventor, such as “the Jones patent,” “the Jones patent application publication,” or the number of the patent or patent application publication. A non-patent literature document may be designated by the name of the author, such as the “the Sherwood publication” and the date of the publication, if desired. A sales receipt or invoice should be designated using the date of the receipt, and any appropriate descriptive information, such as ” the March 11, 2011, BigBoxStore sales receipt,” or “the April 1, 2011, XYZ Corporation invoice.” An affidavit or declaration should be designated using the name of the declarant and the date of the affidavit or declaration, such as “the Schmidt declaration dated January 20, 2012.” A transcript of an audio or video recording should be designated using the title of the recording and the date of the recording, if applicable, such as “the transcript of the September 16, 2012, XYZ Corporation Marketing Video.” A discussion within the body of the request regarding a potential issue under 35 U.S.C. 101 may be designated, for example, as “the discussion on pages 7-11 of the request regarding a potential issue under 35 U.S.C. 101.”
  • 2. In bracket 2, insert the claims for which a substantial new question of patentability has been raised.
  • 3. In bracket 3, insert the reasons for the determination that the item of information raises a substantial new question of patentability (SNQ). If a SNQ is found for only a portion of the claims identified with respect to the item of information, then an additional statement may be included explaining why a SNQ was found with respect to some of the identified claims, and why a SNQ was not found with respect to the remainder of the identified claims. For example, if the patent owner requests supplemental examination of claims 1-10 in view of the Schmidt patent, and the examiner finds that a substantial new question of patentability affecting only patent claims 1-5 is raised by that item of information, then the form paragraph may be completed by, for example, stating “The Schmidt patent, as presented in the request, raises a substantial new question of patentability affecting patent claims 1-5 because [provide reasons]. However, the Schmidt patent, as presented in the request, does not raise a substantial new question of patentability affecting patent claims 6-10 because [provide reasons].”