A portion of the Supplemental Examination Request submissions for patents have been rejected for failing to comply with the new rules. Based on an application that was accepted for Supplemental Examination, I have developed a template of what appears to meet the requirements:
In the United States Patent and Trademark Office
Patent Application Examining Operations
|Application No.:||Patent No.:|
Request for Supplemental Examination
Mail Stop Ex Parte Reexam
Central Reexamination Unit
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
This petition requests Supplemental Examination of claims of U.S. Patent No. .
§ 1.610 (a)
The required fee of $21,260 is submitted herewith, which includes the request filing fee of $5,140 and the reexamination fee of $16,120.
§ 1.610 (b) (1)
Supplemental Examination pursuant to 35 U.S.C. §257 et seq. is requested for U.S. Patent entitled , issued .
§ 1.60 (b) (2)
Items of information submitted herewith are the following:
§ 1.60 (b) (3)
There are no other prior or concurrent proceedings involving this patent.
§ 1.60 (b) (4)
Supplemental Examination is request for claims of U.S. Patent No.
A substantial new question of patentability is believed to exist because prior art considered during the prosecution of the patent did not show . The items of information submitted with this request do show this feature.
Each of the items of information submitted is directed to a system of this type or mentions use in a system of this type. However, the items of information do not show .
Thus, while the cited prior art failed to show a(n) the items of information do show such a feature. A feature disclosed in the items of information above and for that reason petitioner believes that a substantial new question of patentability exists with respect to claims of the patent.
§ 1.60 (b) (5)
Reference is made to the chart below which shows the partial correspondence of the items of information and cited prior art with claims of the patent. The chart is not to be constructed as an admission that the features of the prior art referenced therein contain each limitation of the corresponding phrases from the claims.
§ 1.60 (b) (6)
A copy of the patent is submitted herewith as attachment A.
§ 1.60 (b) (7)
Copies of each item of information are submitted herewith as attachments B, C, D, E, F, G, and H.
§ 1.60 (b) (8)
Not applicable: no items of information are over 50 pages in length.
§ 1.60 (b) (9)
A statement under 37 CFR 3.73 (c) identifying [assignee] owner of the patent for which Supplemental Examination is requested is submitted herewith.
Explanation under 37 CFR 1.610(c) (3) and (4)
While Petitioner believes that the items of information as submitted do raise a substantial new question of patentability, Petitioner also believes that claims of the patent are patentable over the new prior art. What the items of information disclose that is new is the use of . While the new prior art adds a combination not previously considered, this is not enough to render claims invalid.
Thus, no single piece of prior art, either cited during prosecution, submitted herewith, shows the claimed invention. Further, there is no teaching that would suggest that claimed elements.