Appeal No. 2006-0009 3
Reexamination Control No. 90/005,589
See Brief at 4-6.1
According to MPEP § 2258 (7th ed., Jul. 1998):
A. Previously Considered Prior Art Patents Or Printed Publications
After reexamination is ordered based on a proper substantial new question
of patentability, a ground of rejection based wholly on prior art previously
considered by the Office (in an earlier examination of the patent) may not be
raised by the examiner. In re Recreative Technologies, 83 F.3d 1394, 38 USPQ2d
1776 (Fed. Cir. 1996). In deciding whether to make a rejection of the claims, the
consideration to be given to prior art patents or printed publications cited in an
earlier examination is controlled by In re Portola Packaging Inc., 110 F.3d 786,
42 USPQ2d 1295 (Fed. Cir. 1997).
In In re Portola Packaging, Inc., 110 F.3d 786, 790-91, 42 USPQ2d 1295, 1299 (Fed. Cir.
1997), the Court explained that:
[R]eexamination of the same claims in light of the same references does not raise
a substantial new question of patentability, which is the statutory criterion for
reexamination.
Congress intended that on reexamination a patent holder would not have
to argue that claims were valid over the same references that had been considered
by the PTO during the original examination.
Thus, the Court held:
1 Reference herein to the “Brief” is to the “APPEAL BRIEF PURSUANT TO 37 C.F.R.
§ 1.192(a)” dated January 21, 2003.
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