Appeal No. 2007-0111
Reexamination 90/006,297
1 accorded the claims an earlier effective filing date sufficient to antedate the prior
2 art reference.
3 This is precisely what occurred in the original examination of the application
4 which issued as the subject patent being here reexamined. In the original
5 examination, the examiner determined that the patentees were entitled to the filing
6 date the Italian ‘109 application and thus Vandenberg was antedated. (Office
7 action mailed on July 13, 2001, paper 91 at 1; Reasons for Allowance mailed
8 October 2, 2001, paper 95.) For reasons discussed more fully below, this
9 determination, which rendered moot any further consideration of the substantive
10 issues of patentability over Vandenberg, was in error. Because the examiner never
11 fully considered the substantive issues of patentability of the claims over the prior
12 art as a result of the incorrect assessment of the effective filing date, previous 35
13 U.S.C. § 303(a) does not bar prior art rejections based on Vandenberg.
14 We find nothing in the text of previous 35 U.S.C. § 303(a) that would
15 preclude the PTO’s interpretation. And, in our opinion, the PTO’s interpretation is
16 consistent with the primary legislative purpose of the reexamination statute, which
17 is “to correct errors made by the government, to remedy defective governmental
18 (not private) action, and if need be to remove patents that never should have been
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