Appeal No. 2007-0111
Reexamination 90/006,297
1 of the reexamination statute, which is to correct government errors. If examiners
2 are always presumed to have discharged their official duties in accordance with the
3 law (i.e., infallible as to patentability), no reexamination statute would have been
4 necessary. With respect to the contention that “reexamination can never be based
5 on old art alone,” we agree that reexamination based solely on “old art” that has
6 been fully considered (i.e., whether it is available as prior art under 35 U.S.C. §
7 102 and whether its teachings can be used to support a rejection under 35 U.S.C. §
8 102 or 103) in the original examination would be barred. But here, Vandenberg,
9 raises a substantial new question of patentability because the examiner of the
10 original patent mistakenly believed that the reference was not available as prior art
11 under 35 U.S.C. § 102, and therefore the examiner never fully considered it. When
12 Vandenberg was incorrectly excluded from available prior art, the examiner of the
13 original patent was deprived from fully considering all of the relevant prior art at
14 the time the patentability determination was made.
15 The patent owner argues that we are bound by Ex parte Natta, Appeal No.
16 95-2683 (BPAI Jul. 29, 1998), vacated in part and remanded, No. 99-1183 (Fed.
17 Cir. Apr. 5, 1999). (Amended appeal brief at 27-29.) Again, we disagree. The
18 pertinent issue in that appeal was whether the claims were unpatentable under 35
19 U.S.C. § 112, ¶1, because the disclosure of the ‘912 application, as originally filed,
20 did not provide adequate written description support for the claimed subject matter,
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