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Message: Re: What should we reasonably expect on the '336? - Eggbert

if "correct" you mean plausible or valid.....

1. Rejection of the latest re-exam request due to the simple fact that it has been amended, with new words/claim numbers, and the request should be adjusted accordingly.

I'm not sure.....I think Mark posted an MPEP on that saying it can be adjusted without starting over....and could still be rejected or not just the same. Check that out.

From MPEP 2295:

http://www.uspto.gov/web/offices/pac/mpep/documents/2200_2295.htm

I. PRIOR REEXAMINATION MATURES TO CERTIFICATE WHILE LATER REEXAMINATION IS PENDING

If a second request for reexamination of a patent is filed where the certificate for the first reexamination of the patent will issue within 3 months from the filing of the second request, the proceedings normally will not be merged. If the certificate for the first reexamination proceeding will issue before the decision on the second request must be decided, the reexamination certificate is allowed to issue. The second request is then considered based upon the claims in the patent as indicated in the issued reexamination certificate rather than the original claims of the patent. The Legal Instrument Examiner (LIE) will print out a copy of the issued reexamination certificate and make it of record in the second reexamination file wrapper as a preliminary amendment.

2. Rejection of the latest re-exam request due to the simple fact that the prior art cited was considered in the prior re-exam process.

Plausible. Obviousness is subjective....let alone if the new combo's are working practical solutions. If it comes down to that hopefully Henneman can set the examiner straight like in the past. A techie could give you a better answer.

3. Continuation of a full-blown re-exam.

It is a valid possibility simply because it is being considered.

I think it's going to get fully-blown out of the water. IMO

GLTAL

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