Appeal No. 2007-0111
Reexamination 90/006,297
1 appear in the reexamination request, in the nature of the prior art, in
2 the prosecution history of the prior examination, or in an admission by
3 the patent owner, applicant, or inventor. See 37 CFR 1.104(c)(3).
4 The following examples are intended to be illustrative and not
5 inclusive.
6 * * * *
7 Another example involves the situation where an examiner
8 discussed a reference in a prior Office proceeding, but did not either
9 reject a claim based upon the reference or maintain the rejection
10 based on the mistaken belief that the reference did not qualify as prior
11 art. For example, the examiner may not have believed that the
12 reference qualified as prior art because: (i) the reference was undated
13 or was believed to have a bad date; (ii) the applicant submitted a
14 declaration believed to be sufficient to antedate the reference under 37
15 CFR 1.131; or (iii) the examiner attributed an incorrect filing date to
16 the claimed invention. If the reexamination request were to explain
17 how and why the reference actually does qualify as prior art, it may
18 be appropriate to rely on the reference to order and/or conduct
19 reexamination. For example, the request could: (i) verify the date of
20 the reference; (ii) undermine the sufficiency of the declaration filed
21 under 37 CFR 1.131; or (iii) explain the correct filing date accorded a
22 claim. See e.g., Heinl v. Godici, 143 Supp.2d 593 [sic, F. Supp.2d]
23 (E.D.Va. 2001) (reexamination on the basis of art previously
24 presented without adequate proof of date may proceed if prior art
25 status is now established). [Italics added.]
26
27 Accordingly, the PTO interprets the statutory phrase “a substantial new
28 question of patentability” in previous 35 U.S.C. § 303(a) to be inclusive of
29 rejections based on prior art that was cited in the original examination but wherein
30 the examiner never completed or fully considered the substantive issues of
31 patentability of the claims over the prior art (anticipation under 35 U.S.C. § 102
32 and obviousness under 35 U.S.C. § 103) because the examiner mistakenly
46
Page: Previous 39 40 41 42 43 44 45 46 47 48 49 50 51 52 53 Next
Last modified: September 9, 2013