Appeal No. 2006-1585 3
Reexamination Control No. 90/005,888
lack of supervisory approval for the examiner’s decision to reopen prosecution and enter the new
rejections in the non-final Office action, and thus waived any objection thereto. Consequently,
on the record before us, the procedural propriety of the non-final Office action is not at issue.
On appeal, the patent owner seeks review by this Board of the new rejections of claims
1-49 entered in the non-final Office action.
Section 306 of Title 35, United States Code, grants the patent owner in a reexamination
proceeding the right to “appeal under the provisions of section 134 of this title.” Section 134
reads as follows:
§ 134 Appeal to the Board of Patent Appeals and Interferences
(a) Patent applicant.— An applicant for a patent, any of whose claims has been
twice rejected, may appeal from the decision of the primary examiner to the
Board of Patent Appeals and Interferences, having once paid the fee for such
appeal.
(b) Patent owner.— A patent owner in any reexamination proceeding may appeal
from the final rejection of any claim by the primary examiner to the Board of
Patent Appeals and Interferences, having once paid the fee for such appeal.[ 2 ]
(c) Third-party.— A third-party requester in an inter partes proceeding may
appeal to the Board of Patent Appeals and Interferences from the final decision of
the primary examiner favorable to the patentability of any original or proposed
amended or new claim of a patent, having once paid the fee for such appeal.
On its face, § 134 does not allow for an appeal to this Board by a patent owner
in a reexamination proceeding from anything other than a final rejection. Section
41.31(a)(3) of Title 37, Code of Federal Regulations, mirrors the statute by providing in
pertinent part that “[e]very owner of a patent under ex parte reexamination filed under
§ 1.510 of this title on or after November 29, 1999, any of whose claims has been finally
2 This provision applies to reexamination proceedings filed on or after November 29, 1999. See MPEP § 2273 (8th
ed., Rev. 4, Oct. 2005)). The instant reexamination proceeding was filed December 12, 2000.
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