C.F.R. » Title 37 » CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE › SUBCHAPTER A—GENERAL › PART 1—RULES OF PRACTICE IN PATENT CASES › Subpart D—Ex Parte Reexamination of Patents

37 C.F.R. § 1.552

Scope of reexamination in ex parte reexamination proceedings

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(a) Claims in an ex parte reexamination proceeding will be examined on the basis of patents or printed publications and, with respect to subject matter added or deleted in the reexamination proceeding, on the basis of the requirements of 35 U.S.C. 112.

(b) Claims in an ex parte reexamination proceeding will not be permitted to enlarge the scope of the claims of the patent.

(c) Issues other than those indicated in paragraphs (a) and (b) of this section will not be resolved in a reexamination proceeding. If such issues are raised by the patent owner or third party requester during a reexamination proceeding, the existence of such issues will be noted by the examiner in the next Office action, in which case the patent owner may consider the advisability of filing a reissue application to have such issues considered and resolved.

(d) Any statement of the patent owner and any accompanying information submitted pursuant to § 1.501(a)(2) which is of record in the patent being reexamined (which includes any reexamination files for the patent) may be used after a reexamination proceeding has been ordered to determine the proper meaning of a patent claim when applying patents or printed publications.

[65 FR 76776, Dec. 7, 2000, as amended at 77 FR 46627, Aug. 6, 2012]
Notes of Decisions
Cited in 16 cases, 1983–2018 · leading case: In Re Berwyn E. Etter, 756 F.2d 852 (Fed. Cir. 1985).
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In Re Berwyn E. Etter, 756 F.2d 852 (Fed. Cir. 1985). · cites it 5× “37 CFR 1.552; MPEP Sec. 2258. 4 The focus of the limited proceedings under Chapter 30 thus returns essentially to that present in an initial examination, i.”
Ethicon, Inc. v. Donald J. Quigg, Comm'r of Patents & Trademarks & the United States Pat. & Trademark Off., 849 F.2d 1422 (Fed. Cir. 1988). “Secondly, precise duplication of effort does not occur because the PTO and the courts employ different standards of proof when considering validity, and the courts, unlike the PTO during a reexamination of patent claims, are not limited to review of prior art patents or printed…”
Total Containment, Inc. v. Environ Prods., Inc., 921 F. Supp. 1355 (E.D. Pa. 1995). · cites it 3× “” 6 37 C.F.R. § 1.552 (a). Other questions will not be resolved during reexamination proceedings.”
Cordis Corp. v. Medtronic Ave, Inc., 511 F.3d 1157 (Fed. Cir. 2008). “” 37 C.F.R. § 1.552 (b). Here, the district court acknowledged, and BSC concedes, that claim 44 does not broaden the scope of coverage of the '762 patent.”
Bosch Auto. Serv. Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017). “2011) (citing 37 C.F.R. §§ 1.552 (a) (ex. parte reexamination), 1.”
John Bean Tech. v. Morris & Assocs. Inc, 887 F.3d 1322 (Fed. Cir. 2018). “§ 305 ; 37 C.F.R. § 1.552 (b). While claim broadening can result in the invalidation of the claims under § 305, claim narrowing means that the scope of what is and is not an infringing product can change.”
Cardpool, Inc. v. Plastic Jungle, Inc., 817 F.3d 1316 (Fed. Cir. 2016). “See 37 C.F.R. § 1.552 (section 101 eligibility is not considered on reexamination).”
In Re Ntp, Inc., 654 F.3d 1268 (Fed. Cir. 2011). · cites it 2× “§ 301; 37 C.F.R. §§ 1.552 (c), 1.906(c). Moreover, during reexamination, the patent claims no longer carry the statutory presumption of validity.”
Icon Health & Fitness, Inc. v. Polar Electro Oy, 243 F. Supp. 3d 1229 (D. Utah 2017). · cites it 2× “2011) (citing 37 C.F.R. § 1.552 ) (“[ (Qualification as patentable subject matter under § 101 .”
Smartgene, Inc. v. Advanced Biological Labs., Sa, 852 F. Supp. 2d 42 (D.D.C. 2012). · cites it 2× “37 C.F.R. § 1.552 . This lawsuit, therefore, is not dealing with matters previously covered during the reexamination proceedings.”
E.I. Du Pont De Nemours & Co. v. Polaroid Graphics Imaging, Inc., 706 F. Supp. 1135 (D. Del. 1989). “§§ 302-307 ; 37 C.F.R. § 1.552 (a)-(c). If Polaroid had raised additional arguments not based on issued patents, then the difference between a reissue procedure and a reexamination procedure might have become significant.”
Rsch. Corp. v. Gourmet's Delight Mushroom Co., 560 F. Supp. 811 (E.D. Pa. 1983). “See 37 C.F.R. 1.552 (1982). 10 . Defendants do not accept Research’s assertion that the 1971 article dealt only with supplementation with undenatured proteins.”
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