Appeal No. 2006-0009 4
Reexamination Control No. 90/005,589
[A] rejection made during reexamination does not raise a substantial new question
of patentability if it is supported only by prior art previously considered by the
PTO in relation to the same or broader claims.
Id. at 791, 42 USPQ2d at 1300; cf. In re Bass, 314 F.3d 575, 577, 65 USPQ2d 1156, 1157 (Fed.
Cir. 2002) (consideration of references from first reexamination permitted in second
reexamination because the references had not been reviewed in a completed prior proceeding).
In the rejection before us, the examiner relies solely on Van Swam. A review of the
image file wrapper of Application 09/000,1042 reveals that Van Swam was previously
considered by the Office. See PTO-1449 considered March 1999. Furthermore, claim 1 in U.S.
Patent No. 5,940,464 and claim 1 on appeal are the same. Therefore, the rejection of claim 1
under 35 U.S.C. § 102(b) as being anticipated by Van Swam does not raise a substantial new
question of patentability. For this reason, the rejection is reversed.
B. Rejection based on Sabol
Claims 1-4 are rejected under 35 U.S.C. § 102(b) as anticipated by Sabol. Sabol
describes a tube of zirconium alloy which may be used to fabricate nuclear fuel cladding for a
fuel rod. See Sabol at col. 3, line 33-col. 4, line 56. Articles formed from the disclosed alloy are
2 Application 09/000,104 matured into U.S. Patent No. 5,940,464, the claims of which
are subject to the instant reexamination proceeding.
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