MPEP Q & A 314: What will the request indicate for each patent and printed publication cited in the request?

Question:

When an examiner concludes that no substantial new question of patentability has been raised, they will prepare a decision denying the reexamination request. What will that request indicate for each patent and printed publication cited in the request?

Answer:

If the examiner concludes that no substantial new question of patentability has been raised, the examiner should prepare a decision denying the reexamination request.

The decision denying the request will then indicate, for each patent and printed publication cited in the request, why the citation is:

(A) Cumulative to the teachings of the art cited in the earlier concluded examination or review of the patent, or raised to or by the Office in a pending reexamination or supplemental examination of the patent;
(B) Not available against the claims (e.g., the reference is not available as prior art because of its date or the reference is not a publication);
(C) Not important to a reasonable examiner in deciding whether any claim of the patent for which reexamination is requested is patentable, even though the citation is not cumulative and the citation is available against the claim; or
(D) One which was cited in the record of the patent and is barred by the guidelines set forth in MPEP § 2242, subsection II. A.

Chapter Details:

The answer to this question can be found in chapter 2200 of the MPEP. This chapter covers Citation of Prior Art and Ex Parte Reexamination of Patents.

The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2247 of the MPEP. The following is a brief summary of section 2247.

2247 Decision under 35 U.S.C. 303 on Request for Reexamination filed Under 35 U.S.C. 302, Request Denied
The request for reexamination will be denied if a substantial new question of patentability is not found based on patents or printed publications.
If the examiner concludes that no substantial new question of patentability has been raised, the examiner should prepare a decision denying the reexamination request.