Saturday, December 24, 2005

Rejections of claims in re-exam of NTP patents.

The re-examination of the NTP patents is an ex parte re-examination proceeding under 37 CFR 1.550(f). In re-exam 90/006675, claims 1-89 and 183-200 were rejected in a non-final Office Action on December 15, 2005. There are rejections under 112, 102, 103 and for double-patenting.

35 USC 307:

(a) In a reexamination proceeding under this chapter, when the time for appeal has expired or any appeal proceeding has terminated, the Director will issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent any proposed amended or new claim determined to be patentable.

See also 37 CFR 1.570. MPEP 2288

The issuance of a final Court decision (in a civil action arising in whole or in part under 28 U.S.C. 1338) upholding validity during an inter partes reexamination, where the person who filed the request was a party to the litigation, will have the effect that the Office will discontinue examination of all claims affected by the holding of validity. If the provisions of 37 CFR 1.907(b) apply such that all of the claims in the reexamination proceeding cannot be maintained, the order to reexamine is vacated by the TC Director, and reexamination is terminated. If the provisions of 37 CFR 1.907(b) apply to some of the claims, but not all of the claims in the proceeding; those claims to which 37 CFR 1.907(b) applies will not be treated. The examiner's action will point out the claims not treated, and the reason why those claims cannot be maintained in the reexamination under 37 CFR 1.907(b). Action will be given on the remaining claims. Note that the provisions of 37 CFR 1.907(b) cannot be waived since they track the statute, 35 U.S.C. 317.


Post a Comment

<< Home