“Substantial New Question”: Still a Loser for Patentees?

Scott Daniels | August 20, 2010

The PTO’s decision this June to allow patentees to challenge the examiner’s determination of a “substantial new question of patentability” (SNQ) in its appeal of a final rejection to the PTO Board – as opposed to the previous practice of requiring the patentee to make such a challenge in a petition filed within two months of the reexamination grant – was met with some fanfare in the Blogosphere.  Yet, whether the challenge is by petition or appeal, the hurdle faced by the patentee remains quite high.

The difficulty of that burden was demonstrated in the Board’s decision in Ex parte Buttercup Legacy, 90/008,820 (August 19, 2010).  There, the claimed invention was a “lubrication sheet for lubricating a paper shredder.”  The claim included the limitation of “one or more shell layers [proving] mechanical stiffness and rigidity to the lubrication sheet.”  The primary reference relied upon in the Request and by the examiner, “Zettler,” disclosed a “thin sheet” which could be made from paper, foil or magnetic tape.  This disclosure was used by the Requester and the examiner to satisfy the shell layer stiffness limitation.

The patentee argued to the Board that the examiner had been wrong in finding an SNQ because Zettler was merely cumulative to a reference cited in the original prosecution of the patent for the disclosure of an “oil impervious film.”

The Board disagreed, citing the MPEP (§ 2258.01) for the definition of “a cumulative reference” as one “that substantially reiterates verbatim the [original] reference …”  Further, “it is expected that a repetitive reference which cannot be considered by the Office during reexamination will be a rare occurrence since most references teach additional information or present information in a different way than other references, even though the references might address the same general subject matter” (emphasis added).  In this case, the Board noted that the newly-cited reference disclosed specific “thin sheet materials” (paper, foil, and magnetic tape), whereas the reference in the original prosecution was “silent as the materials that are representative of ‘films.’”  Zettler was not cumulative.

As a footnote to this SNQ discussion, we should add that the Board affirmed the examiner’s anticipation rejection of the claims over Zettler, construing the claims in a very broad manner, so that the prior art met the critical shell layer stiffness limitation: “any increase [in stiffness], no matter how small, would meet the claim limitation” (emphasis in original).

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