Scott Daniels | April 7, 2011

Since last June, the PTO Board of Appeals has had jurisdiction to consider whether the original grant of ex parte reexamination was correct.  Thus, when the patentee appeals a final rejection to the Board, it may also challenge the Examiner’s original determination that the reexamination request raised a “substantial new question of patentability” (SNQ). 

Today’s Board decision in Ex parte Samsung Electro-Mechanics Co., Ltd. (90/008,993) addressed the interesting question of how to determine whether issue raised in a request is “new.”  Samsung’s patent claimed an image module, including an automatic focusing feature for lens adjustment in digital cameras.  The request asserted two potential SNQs.  In the second, the requester asserted that the patent claims were obvious over two references identified as “APA” and “JP ‘405.”  Agreeing that an SNQ had been raised, the examiner granted reexamination, and later issued a final rejection of the claims based on that prior art.

On appeal to the Board, Samsung argued, inter alia, that reexamination should not have been granted because no new SNQ was raised in the request and because the request failed to “include a detailed explanation of the pertinency” of the cited references to the patent claims.  Samsung acknowledged that JP ‘405 had not been before the examiner in the original prosecution, but argued that it did “not disclose any feature relevant to the issued claims [of the patent] that is not already disclosed in” the Takishima reference that was before the original examiner. 

The Board disagreed, citing the Notice of Allowance in which the examiner stated that he had allowed the original application because none of the art of record disclosed the “claimed feature of an elastic means for supplying current to a driving coil of the lens blade”  (emphasis added).  The Board explained that whether Takishima actually disclosed this claimed “elastic means” is irrelevant in this case.  The examiner’s “perceived missing feature in the prior art was a main reason for allowing issuance of the ‘047 patent, whether or not Takishima actually fails to disclose the claimed manner of supplying current to the driving coil.” (Emphasis added).  The Board added that, “for the purposes of resolving the issue of whether a substantial new question of patentability was raised in the Request, Takishima is irrebuttably presumed as failing to describe an elastic means for supplying current to a driving coil.”  (Emphasis added).  Thus, the original examiner’s perception of the art of record, not the actual disclosure of that art, determined whether reexamination had been properly granted.

With respect to Samsung’s argument that the request failed to “include a detailed explanation of the pertinency” of the cited references, the Board said simply that such explanation is required by the PTO Rules, but is not an appealable issue. 

Finally, in the main portion of its appeal, Samsung argued that, regardless of whether an SNQ had been raised by the request, its claims were not obvious over the prior art.  The Board disagreed and affirmed the rejection.

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