The request for reexamination will be denied if a SNQ/RLP is not found based on patents or printed publications.
If the examiner concludes that no SNQ/RLP has been raised, the examiner should prepare a decision denying the reexamination request. Form paragraph 26.02 should be used as the introductory paragraph in a decision denying reexamination.
For a request filed prior to September 16, 2011, the following version was to be used:
Former ¶ 26.02 No New Question of Patentability
No substantial new question of patentability is raised by the present request for inter partes reexamination and the prior art cited therein for the reasons set forth below.
For a request filed beginning September 16, 2011 and ending September 15, 2012, the following version is used:
¶ 26.02 No reasonable likelihood established
For the reasons set forth below, the present request for inter partes reexamination fails to establish a reasonable likelihood that requester will prevail with respect to at least one of the challenged claims of United States Patent Number .
The decision denying the request will then indicate, for each patent or publication cited in the request, why a SNQ/RLP has not been established by the request, for that citation.
The examiner should also, in the decision, respond to the substance of each argument raised by the third party requester which is based on patents or printed publications.
If arguments are presented as to grounds not based on prior art patents or printed publications, such as those based on public use or on sale under 35 U.S.C. 102(b), or abandonment under 35 U.S.C. 102(c), the examiner should note that such grounds are improper for reexamination and are not considered or commented upon. See 37 CFR 1.906(c).
See MPEP § 2647.01 for an example of a decision denying a request for inter partes reexamination which was filed prior to September 16, 2011 (when the SNQ standard was applied).
The decision denying the request is processed for mailing by the Central Reexamination Unit (CRU), and the CRU will allow time for petition seeking review of the examiner’s determination refusing reexamination. If such a petition is not filed within one (1) month of the examiner’s determination denying reexamination, the CRU then processes the reexamination file to provide the partial refund set forth in 37 CFR 1.26(c) (the Office of Finance no longer processes reexamination proceedings for a refund).
The reexamination proceeding is then given a 420 status in the Office’s PALM system. A copy of the PALM “Application Number Information” screen and the “Contents” screen is printed, the printed copy is annotated by adding the comment “PROCEEDING CONCLUDED,” and the annotated copy is scanned into IFW using the miscellaneous letter document code.
The concluded reexamination file (electronic or paper) containing the request and the decision denying the request becomes part of the patent’s record.
PROCESS OF PREPARING THE DECISION DENYING THE REQUEST
If the examiner’s position is to deny reexamination, the examiner prepares for and sets up a panel review conference as per MPEP § 2671.03, to discuss the issuance of a decision denying reexamination. The examiner may prepare the decision after the conference, or may prepare the decision prior to the conference and revise it, as needed.
If the conference confirms the examiner’s preliminary decision not to grant reexamination, the decision denying reexamination is completed and signed by the examiner, with the two or more other conferees initialing the action (as “conferee” ) to indicate their presence in the conference. A transmittal form PTOL-2070 with the third party requester’s address is completed, if a copy for mailing is not already available. The transmittal form PTOL-2070 is used to forward the decision to the third party requester. The use of this form removes the need to retype the third party requester’s address each time a mailing is required.