Appeal No. 2007-0111
Reexamination 90/006,297
1 The court’s ruling, therefore, rested on the key facts that (i) the
2 specifications of the great-grandparent application and the patent being reexamined
3 were identical and (ii) the examiner had determined that the great-grandparent
4 application contained an enabling disclosure relative to the claims of the great-
5 grandchild. It appears to us that in the court’s view, determination of the
6 sufficiency of the disclosure in the great-grandparent application could not be
7 reexamined because that would be tantamount to reexamining the sufficiency of
8 the patent disclosure, which is impermissible under 35 U.S.C. §§ 301-302, 37 CFR
9 § 1.552(a), 37 CFR § 1.552(c), and MPEP § 2258.
10 Here, by contrast, the rejections are based on 35 U.S.C. §§ 102 and 103.
11 Indeed, the examiner has not rejected the appealed claims as failing to comply with
12 the written description requirement of 35 U.S.C. § 112, ¶1, because such action is
13 barred and the subject matter of the appealed claims was part of the disclosure of
14 the ‘912 application, as originally filed on May 12, 1992. Also, unlike the
15 situation in Patlex, the specifications of the Italian priority applications, the ‘097
16 application, and the ‘840 application as originally filed differ significantly from the
17 specification of the ‘687 patent under reexamination. As discussed above, it was
18 not until October 2, 1964 (which is well after the filing dates of the Italian priority
19 applications, the ‘097 application, and the ‘840 application) that the patentees
20 introduced subject matter similar to the appealed claims of this reexamination.
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