Appeal No. 2006-2084
Reexamination Control No. 90/006,360
"Nikcole Mini-Thin™ Grooving and Cutoff System" catalog, Nikcole, Inc.
(August 1992) (Exhibit 4 to request for reexamination).
Kyocera catalog, published September 5, 1993 (Exhibit 6 of the request for
reexamination), cover and pages 2-6 and 11 ("Bates" numbered E613-618
and E623). The insert screws noted in the tables on page 6 of the catalog are
shown in a Kyocera engineering drawing and catalog page (Exhibit 7 of the
request for reexamination).
The rejection
Claims 1-19 are rejected under 35 U.S.C. § 103(a) as being unpatentable
over Max Bar, ETCO, Nikcole, and Kyocera. This is a new ground of rejection
pursuant to 37 CFR § 41.50(b).
During the prosecution of the '400 patent, the examiner did not rely on the
same portion of ETCO used in this rejection and did not rely on Max Bar or
Kyocera. Nikcole was not of record in the '400 patent. Therefore, a rejection of
this pre-November 2, 2002, reexamination, when the amendment to 35 U.S.C.
§ 303(a) became effective, expressly allowing consideration of previously cited or
considered patents or publications in determining the existence of a substantial new
question of patentability, is proper under USPTO guidelines. See Guidelines for
Reexamination of Cases in View of In re Portola Packaging, Inc., 110 F.3d 786,
42 USPQ2d 1295 (Fed. Cir. 1997), 64 Fed. Reg. 15346 (Mar. 31, 1999) ("the PTO
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