Scott Daniels | June 16, 2010
Requesting reexamination of one’s own patent can have unpredictable consequences, as demonstrated yesterday by the PTO Board’s decision, Ex parte Yasukochi et al.
Three years ago Hisamitsu Pharmaceutical requested reexamination of claims 1, 3 and 6 of its U.S. Patent No. 7,034,083, entitled PRESSURE-SENSITIVE ADHESIVE AND PATCH EMPLOYING THE SAME, in view of certain prior art references that had not been before the examiner in the original prosecution. Reexamination was granted, but for all six claims of the ‘083 patent. After the patentee canceled claim 2, the examiner rejected the remaining claims on the basis of the newly-cited prior art. The patentee traversed and overcame that rejection, but then the examiner rejected the claims over a reference cited in the original prosecution. The Board has now affirmed that new rejection over old prior art.
The ‘083 patentee argued to the Board that the rejection of the claims over the old reference is legally improper since the prior art, on which that rejection was based, did not constitute “a substantial new question of patentability” (SNQ). The Board refused to consider the argument, stating that the question of whether an SNQ exists is an issue that may be petitioned to the Director, but is not appealable to the Board. The limited scope of 35 U.S.C. § 134(b) – that provides for the right of a patentee in reexamination to appeal to the Board – suggests that the Board is correct. On the other hand, Judge Newman’s decision In re Recreative Technologies Corp., 83 F.3d 1394 (Fed. Cir. 1996) suggests that the Board does have jurisdiction over the SNQ issue. The ‘083 patentee must now ask itself whether it should appeal to the courts, petition to the Director, or both.
The remainder of the Board’s decision – in which it dealt with the substance of the ‘083 patentee’s appeal – was also interesting. In particular, the Board broadly construed the recitation of an “adhesive … comprising a polymer … crosslinked by boric acid or a boric acid derivative …” to include adhesives that additionally contain uncrosslinked polymers. In doing so, the Board expressly refused to permit the patent to limit its claims by disclaiming adhesive embodiments containing both crosslinked and uncrosslinked polymers. The Board explained that “it would be inappropriate for the Office to accept a disavowal of scope, no matter how clearly stated, in lieu of an amendment to the claims.”