37 C.F.R. § 1.906

Scope of reexamination in inter partes reexamination proceeding

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(a) Claims in an inter partes 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 inter partes 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 an inter partes reexamination proceeding. If such issues are raised by the patent owner or the 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 desire to consider the advisability of filing a reissue application to have such issues considered and resolved.

Notes of Decisions

Cited in 2 cases, 2008–2014 · leading case: Interval Licensing LLC v. Aol, Inc., 766 F.3d 1364 (Fed. Cir. 2014).

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Interval Licensing LLC v. Aol, Inc., 766 F.3d 1364 (Fed. Cir. 2014). “Per 37 C.F.R. § 1.906 , the Board was limited to the question of whether the challenged claims should be rejected on the basis of prior art patents or printed publications.”

ACCO Brands, Inc. v. PC Guardian Anti-Theft Prods., Inc., 592 F. Supp. 2d 1208 (N.D. Cal. 2008). “See MPEP § 2658, 37 C.F.R. 1.906. The term "about 3mm x 7 mm” was neither added nor deleted during the inter partes reexamination.”

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