Appeal No. 2005-2512
Reexamination Control No. 90/006,431
before 11/8/1994 (See In re Epstein, 32 F.3d 1559, 1564, 31 USPQ2d 1817, 1820 (Fed.
Cir. 1994)).”
Fin.Act. 8 para. 18. This argument confuses the status of the RailMill documents as
prior printed publications, whose contents can be relied on to reject claims under
reexamination, with their status as evidence of prior public knowledge or use of the
RailMill product, which knowledge or use is not a proper basis for rejecting claims under
reexamination. See 37 CFR § 1.552:
§ 1.552 Scope of reexamination in ex parte reexamination proceedings.
(a) Claims in an ex parte reexamination proceeding will be
examined on the basis of patents or printed publications and, with respect
to subject matter added or deleted in the reexamination proceeding, on
the basis of the requirements of 35 U.S.C. 112.
(b) Claims in an ex parte reexamination proceeding will not be
permitted to enlarge the scope of the claims of the patent.
(c) Issues other than those indicated in paragraphs (a) and (b) of
this section will not be resolved in a reexamination proceeding. . . .
See also MPEP § 2258, subsection I, part B (“A rejection on prior public use or sale,
insufficiency of disclosure, etc., cannot be made even if it relies on a prior art patent or
printed publication.”). In Epstein, the court did not consider or approve of relying on
product release dates to establish publication dates, as the examiner is asking us to do.
Instead, the court approved of the board’s reliance on product release dates given in
subsequently published abstracts to establish that the products were placed on sale on
those release dates.
As further evidence that the RailMill documents were published prior to
appellant’s April 17, 1995, filing date, the examiner contends that because the
18
Page: Previous 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Next
Last modified: November 3, 2007