Appeal 2007-0393
Reexamination Control 90/006,786
Patent 6,497,843
1 an action against the same infringer under the 843 patent notwithstanding the
2 settlement and license agreement with Lee on the patentably indistinct
3 invention.
4 Conclusion of Law
5 No error has been shown in the Examiner’s holding that the terminal
6 disclaimer was insufficient to meet the common ownership requirement of
7 37 CFR § 1.321(c) and that the terminal disclaimer is insufficient to resolve
8 the double patenting issue.
9 Propriety of Reexamination
10 Patentee asserts that reexamination of the 843 patent was
11 inappropriate. This issue is not within either our statutory or Director
12 delegated jurisdiction.
13 The Director of the PTO is authorized by statute to determine whether
14 a substantial new question of patentability exists. 35 U.S.C. § 303. Patentee
15 has not directed us to any basis authorizing us to review the examiner’s
16 determination on whether the initiation or continuance of reexamination was
17 appropriate. Our statutory jurisdiction in appeals is limited to
18 determinations of patentability. 35 U.S.C. § 6(b). The decision that a
19 substantial new question of patentability exists is not a decision on
20 patentability. In appeals, this Board sits to review decisions on patentability.
21 We do not sit as an ombudsman to review the numerous other decisions
22 made by examiners during the conduct of a reexamination proceeding. This
23 issue of the propriety of instituting or continuing the reexamination should
24 have been addressed prior to filing the notice of appeal.
25 Patentee refers to Patlex Corp. v. Mossinghoff, 771 F.2d 480, 226
26 USPQ 985 (Fed. Cir. 1985), as support for the argument that reexamination
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