Where new claims are presented or where any part of the disclosure is amended, the claims of the reexamination proceeding, are to be examined for compliance with 35 U.S.C. 112. Consideration of 35 U.S.C. 112 issues should, however, be limited to the amendatory (e.g., new language) matter. For example, a claim which is amended or a new claim which is presented containing a limitation not found in the original patent claim should be considered for compliance under 35 U.S.C. 112 only with respect to that limitation. To go further would be inconsistent with the statute to the extent that 35 U.S.C. 112 issues would be raised as to matter in the original patent claim. Thus, a term in a patent claim which the examiner might deem to be too broad cannot be considered as too broad in a new or amended claim unless the amendatory matter in the new or amended claim creates the issue. >If a limitation that appears in an existing patent claim also appears in a claim newly presented in a reexamination proceeding, that limitation cannot be examined as to 35 U.S.C. 112. If a dependent claim is rewritten as an independent claim in a reexamination proceeding, that independent claim cannot be examined as to 35 U.S.C. 112, unless the nature of the rewriting raises a new question (e.g., by newly providing a lack of claim antecedent for a term in the claim). <

Intervening rights. Reexamination allows a patent owner to amend or add new claims to its patent, provided the scope of the original claim is not broadened. If used effectively, this tactic can yield claims that overcome the prior art (while hopefully still capturing infringing acts), which may save the value of the patent. However, a doctrine called “intervening rights” can limit the value of new or amended claims and needs to be considered.