Appeal No. 2007-0111
Reexamination 90/006,297
1 the subject matter of the appealed claims. In this regard, we view Ex parte Natta,
2 Appeal No. 89-1569, slip op. at 2-6 (BPAI 1990), to which the examiners are
3 bound because it is the law of the case, as more on point.6
4 The patent owner’s mistaken belief that we must defer to initial
5 determinations of supervisory patent examiners, examiners, and quality assurance
6 specialists in this reexamination has no basis. (Amended appeal brief at 30.)
7 BlackLight Power, Inc. v. Rogan, 295 F.3d 1269, 1274, 63 USPQ2d 1534, 1538
6 At oral argument on December 11, 2006, Administrative Patent Judge
(APJ) Delmendo criticized the patent owner’s reliance on Ex parte Natta, Appeal
No. 95-2683 as “disingenuous” because APJ Delmendo thought that this decision
was vacated. In a facsimile communication to APJ Delmendo on December 13,
2006, the patent owner argued: “A review of the record shows that the Board’s
prior reversal was not ‘vacated’ as to the holding that the claims that recite
‘ethylene’ were described and entitled to benefit of the earlier applications in the
chain.” (Emphasis added.) The patent owner is correct that Ex parte Natta,
Appeal No. 95-2683 (BPAI Jul. 29, 1998) was not fully vacated and APJ
Delmendo’s choice of the word “disingenuous” was perhaps unfortunate.
Nevertheless, the patent owner fails to acknowledge the existence of an even
earlier Board decision more directly on point, namely Ex parte Natta, Appeal No.
89-1569, slip op. at 2-6, which is closer to the facts of the present case and binding
as law of the case. As we discussed above, the issue presented in Ex parte Natta,
Appeal No. 95-2683 was whether the claims, which were present at the time the
‘912 application was filed, complied with 35 U.S.C. § 112, ¶1. We do not believe
that the Board in Ex parte Natta, Appeal No. 95-2683 held that Vandenberg was
not available as prior art under 35 U.S.C. § 102. To the extent that the Board in Ex
parte Natta, Appeal No. 95-2683 commented that the earlier filed applications
provided written description support with respect to all ethylene content, it
constituted dictum.
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