Appeal No. 2007-0111
Reexamination 90/006,297
1 (Fed. Cir. 2002)(“The PTO’s responsibility for issuing sound and reliable patents is
2 critical to the nation.”).
3 We have considered the patent owner’s arguments based on Patlex Corp. v.
4 Quigg, 680 F. Supp. 33, 6 USQP2d 1296 (D.D.C. 1988) but do not find them
5 persuasive. (Amended appeal brief at 31-32.) The issue in Patlex was “whether a
6 ‘great-grandparent’ application that contains the same specifications [sic,
7 specification] as its ‘great-grandchild’ complies with the requirement of 35 U.S.C.
8 § 112 that the specification contain an enabling disclosure where the first
9 examiner, at the time the ‘great-grandchild’ was issued, had found that the ‘great-
10 grandparent’ contained an enabling disclosure.” Patlex, 6 USPQ2d at 1298.
11 The court in Patlex relied on 35 U.S.C. §§ 301-302, 37 CFR § 1.552(a), 37
12 CFR § 1.552(c), and MPEP § 2258, which taken together precluded rejections in
13 the reexamination under 35 U.S.C. § 112. According to the court, “the
14 Commissioner may not on reexamination consider whether the specification of a
15 patent being reexamined contains an enabling disclosure for the issued patent
16 claims” (emphasis added). Patlex, 6 USPQ2d at 1299. The court did state that the
17 Board “lacked jurisdiction” because the question of whether the great-grandparent
18 application contained an enabling disclosure of the subject matter of the patent
19 being reexamined was already determined in the original examination of the
20 patent. Id.
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