How to file Supplemental Examination Request under new rules

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.:  
Filed:   Issue Date:  
TC/A.U.:   Assignee:  
Confirmation No.:      
Docket No.:      
Customer No.:      


Request for Supplemental Examination 


Mail Stop Ex Parte Reexam

Central Reexamination Unit

Commissioner for Patents

P.O. Box 1450

Alexandria, VA 22313-1450

Dear Sir:

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.

                                                                                     Respectfully Submitted,