Appeal No. 2007-0111
Reexamination 90/006,297
1 303(a)...of title 35, United States Code, on or after the date of enactment of this
2 Act.”).
3 The Manual of Patent Examining Procedure (MPEP) provides guidance on
4 what would constitute “a substantial new question of patentability” within the
5 meaning of previous 35 U.S.C. § 303(a).5 MPEP § 2258.01 (8th ed., Rev. 2, May
6 2004) sets forth two separate sets of guidelines - the first for reexaminations
7 ordered on or after the effective date (Nov. 2, 2002) of the Patent and Trademark
8 Office Authorization Act of 2002 and the second for reexaminations ordered prior
9 to the effective date of the Patent and Trademark Office Authorization Act of
10 2002. In the second set of guidelines, which are relevant here, MPEP § 2258.01
11 states:
12 The Office recognizes that each case must be decided on its
13 particular facts and that cases with unusual fact patterns will occur. In
14 such a case, the reexamination should be brought to the attention of
15 the (Central Reexamination Unit (CRU) Technology Center (TC)
16 Director who will then determine the appropriate action to be taken.
17 Unusual fact patterns may appear in cases in which prior art
18 was relied upon to reject any claim or cited and discussed with respect
19 to the patentability of a claim in a prior related Office proceeding, but
20 other evidence clearly shows that the examiner did not appreciate the
21 issues raised in the reexamination request or the ongoing
22 reexamination with respect to that art. Such other evidence may
5 Refac Int’l Ltd. v. Lotus Dev. Corp., 81 F.3d 1576, 1584 n.2, 38 USPQ2d
1665, 1671 n.2 (Fed. Cir. 1996)(“The MPEP does not have the force and effect of
law; however, it is entitled to judicial notice as the agency’s official interpretation
of statutes and regulations, provided it is not in conflict with the statutes and
regulations.”).
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