Scott Daniels | March 3, 2010

We are sometimes asked whether examiners are aggressive in handling reexaminations – do they focus on the specific rejections proposed in the Request, or is their reexamination broader than in scope than the Request.

Examiners typically address only the specific claims identified in the Request as being invalid over the prior art, citing Sony Computer v. Dudas.  On the other hand, examiners do not limit themselves to the prior art references relied upon in the Request and often assert additional art.

A recent example is Ex parte Becton Dickinson decided last week by the PTO Board.  There, a third party filed a Request for ex parte reexamination against certain claims of Becton’s USP 6,496,865 in April 2007.  The Request relied upon a primary reference as anticipating Becton’s needle claims, and, when combined with a secondary reference, as making those claims obvious.

The examiner agreed that the claims were anticipated.  But for the question of obviousness, the examiner combined the primary reference of the Request with his own secondary references.  The PTO Board has now reversed the anticipation rejection, but affirmed the obviousness rejection.

As might be expected, Becton vigorously attacked the rejection under § 103 – asserting that the prior art did not disclose the “desirability” of one of the claimed needle’s features, that the prior art taught away from the claimed needle, that even if combined, the references do not result in the claimed needle, that the claimed needle gives unexpectedly superior results – but the Board dismissed each assertion, as it affirmed the examiner’s combination of art.

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