Re: '336 Reexam Request excerpt... fwiw..Opty...
in response to
by
posted on
Oct 27, 2009 04:00PM
Check out...
http://www.uspto.gov/web/offices/pac/mpep/documents/2200_2217.htm#sect2217
"II.AFFIDAVITS/DECLARATIONS/OTHER WRITTEN EVIDENCE
Affidavits or declarations or other written evidence which explain the contents or pertinent dates of prior art patents or printed publications in more detail may be considered in reexamination. See MPEP § 2258.
III.ADMISSIONS
The consideration under 35 U.S.C. 303 of a request for ex parte reexamination is limited to prior art patents and printed publications. See Ex parte McGaughey, 6 USPQ2d 1334, 1337 (Bd. Pat. App. & Inter. 1988). Thus an admission, per se, may not be the basis for establishing a substantial new question of patentability. However, an admission by the patent owner of record in the file or in a court record may be utilized in combination with a patent or printed publication.
For handling of admissions during the examination stage of a proceeding (i.e., after reexamination has been ordered), see MPEP § 2258.
The admission can reside in the patent file (made of record during the prosecution of the patent application) or may be presented during the pendency of the reexamination proceeding or in litigation. Admissions by the patent owner as to any matter affecting patentability may be utilized to determine the scope and content of the prior art in conjunction with patents and printed publications in a prior art rejection, whether such admissions result from patents or printed publications or from some other source. An admission relating to any prior art established in the record or in court may be used by the examiner in combination with patents or printed publications in a reexamination proceeding. The admission must stand on its own. Information supplementing or further defining the admission would be improper."
Good luck everyone!