Appeal 2007-0725
Reexamination Control 90/006,785
Patent 5,073,484
35 U.S.C. § 303
A reexamination is proper if a “substantial new question of
patentability affecting any claim of the patent concerned is raised by the
request, with or without consideration of other patents or printed
publications”. Furthermore, “[t]he existence of a substantial new question of
patentability is not precluded by the fact that a patent or printed publication
was previously cited by or to the Office or considered by the Office.” 35
USC § 303(a).
Reexaminations are conducted using the same procedures as are used
for initial examination. 35 USC § 305. Thus, there is no presumption of
validity for a patent undergoing reexamination. In re Etter, 756 F.2d at 858,
225 USPQ at 5 (Fed. Cir. 1985). Furthermore, a court decision that a claim
is valid over certain prior art does not preclude a finding of a substantial new
question of patentability based on the same art. (MPEP 2286, 8th ed., Aug.
2001, revised August 2006; “When the initial question as to whether the
prior art raises a substantial new question of patentability as to a patent claim
is under consideration, the existence of a final court decision of claim
validity in view of the same or different prior art does not necessarily mean
that no new question is present. This is true because of the different
standards of proof and claim interpretation employed by the District Courts
and the Office.”)
12
Page: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Next
Last modified: September 9, 2013