CRU Explains Best Practices for Requests

Scott Daniels and Yoshiya Nakamura | May 26, 2010


The Central Reexamination Unit (CRU) takes special care to point out the various options and obligations that the patentee and the third party have in responding to its Office Actions.  The CRU furthered this practice of actively promoting compliance with the PTO Rules earlier this month by issuing a statement of “Best Practices and FAQs” for the preparation and filing of reexamination requests.  The statement collects from the Rules, the Patent Statute, and the MPEP the requirements for a reexamination request, as well as a sprinkling of practical tips for persuading the PTO that the request is “compliant.”

Most notable in the CRU’s statement is a description of how to establish “a substantial new question of patentability” (SNQ).  Specifically, the discussion in the request of the SNQ “should solely focus on the new technical teaching” in the cited reference or “how the reference is technologically presented in a ‘new light,’ for every claim for which reexamination is requested.”

The request should state whether the reference was considered during the original prosecution and, if so, “to what extent it was considered.”  But the new technical teaching must not be “non-cumulative,” i.e., it must not have been “previously considered and discussed on the record during” the original prosecution.

The SNQ should be presented in its own section with citations to the specific passages in the reference that support a showing of an SNQ.  The “detailed explanation of the proposed rejection is not a valid substitute for identifying a particular new technical teaching that raises [an] SNQ….”  Thus, the presentation of the SNQ should not attempt to apply the cited reference to each limitation of the patent claim(s)-in-issue – rather such a detailed application of the art to the claims should be made in a separate section, preferably as a proposed rejection that the examiner may adopt.

The CRU thus makes clear that it considers an SNQ to be a threshold requirement that must be found before any analysis of whether the claims are patentable over the prior art.

Though reexamination practitioners may be familiar with much of the guidance in the CRU’s new statement, they will be surprised by some points.  For instance, the CRU recommends against applying the prior art to the claims-in-issue by both a narrative explanation of the prior art and a claim chart – including both needlessly lengthens the request.

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