Scott Daniels | June 1, 2010
We have previously pointed out the paradox that whereas applicants in original prosecution are generally successful at the PTO Board, patentees in reexamination are not. That pattern continued last week. Of the seven reexamination decisions issued by the Board, examiner rejections were affirmed in four; in the other three, rejections were affirmed-in-part/reversed-in-part.
Even in the three cases with a mixed result, the patentee did not fare well. The Board reversed the rejection of 13 of the 17 claims in Ex parte Anascape, but only because the examiner had made rejection without having first construed two means-plus-function limitations in those claims.
In Ex parte Cryovac, the Board reversed the rejection of four claims, but those claims appear to have a much more narrow scope than the other claims whose rejection was affirmed.
Finally, the reexamination Ex parte Samsung Electronics was based on a request by the patent owner – presumably, the patent owner filed the request expecting to emerge from reexamination with the patentability of all, not just some, of its claims confirmed.