Appeal No. 2007-0111
Reexamination 90/006,297
1 granted....” In re Recreative Technologies Corp., 83 F.3d 1394, 1397, 38 USPQ2d
2 1776, 1778 (Fed. Cir. 1996).
3 We are not unaware of our reviewing court’s instruction on previous 35
4 U.S.C. § 303(a) that the primary legislative purpose must be balanced against the
5 “potential for abuse, whereby unwarranted reexaminations can harass the patentee
6 and waste the patent life.” In re Recreative Technologies Corp., 83 F.3d at 1397,
7 38 USPQ2d at 1778; accord In re Portola Packaging Inc., 110 F.3d 786, 789-90,
8 42 USPQ2d 1295, 1298-99 (Fed. Cir. 1997). However, neither of these cases
9 involved the situation we have here where the examiner in the original examination
10 did not finalize (i.e., complete or fully consider) a substantive determination of
11 patentability under 35 U.S.C. §§ 102 and 103 but rather the rejections were
12 withdrawn based on an incorrect assessment of the effective filing date of the
13 patented claims. In other words, both In re Recreative Technologies Corp. and In
14 re Portola Packaging Inc. involved the reexamination of finalized (i.e., completed
15 or fully considered) substantive patentability determinations made in the original
16 examination, not determinations on whether a document is available as prior art - a
17 threshold question.
18 Moreover, we foresee no “potential for abuse” in the present case because
19 the patent owner has already benefited from numerous other closely related United
48
Page: Previous 41 42 43 44 45 46 47 48 49 50 51 52 53 54 55 Next
Last modified: September 9, 2013