Appeal 2007-2358
Reexamination Control No. 90/006,888
C. Discussion
Substantial New Question of Patentability
Following a request for reexamination, the statute requires the
Director to determine whether the request raises "a substantial new question
of patentability affecting any claim of the patent concerned." 35 U.S.C.
§ 303. The statute includes the further instruction that "[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 U.S.C. § 303 (2002).
Dura Line does not dispute that neither Oestreich nor Conti was relied
on as evidence of unpatentability during the prosecution that led to the
issuance of the 442 patent. (Reply Brief filed 8 May 2006 ("Reply Br."),
at 1.) Rather, Dura Line maintains that it presented the original Examiner
with statements characterizing the references that "specifically addressed the
same question of patentability that is currently at issue." (Reply Br. 3.)
Dura Line's characterization of Oestreich, presented in an information
disclosure statement, reads in full:
Oestreich teach[es] a conductor for optical cables wherein the
protective casing for each of the transmission elements or fiber
optic cables comprises a double layer including an inner layer
of polystyrene and an outer later of polyamide or similar
material. Thus, Oestreich does not teach or suggest providing a
prelubricated innerduct of the type disclosed and claimed in the
present appl[ic]ation.
(Information Disclosure Statement ("IDS") filed 4 August 1987, in
application 07/021,237; copy filed 25 January 2006 in this Reexamination;
see also Br. at 5) (emphasis added). Dura Line maintains that the Office has
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: September 9, 2013