Dispute at PTO Board over “Substantial New Question” Issue

Scott Daniels | September 9, 2011

Yesterday’s Board decision in Ex parte Civix DDI (90/008,398) addressed several aspects of the issue of substantial new question of patentability (SNQ), the threshold requirement for initiating a reexamination.  The reexamination examiner had rejected most of the patent claims as being anticipated by each of two prior art references, and rejected the remaining claims as being obvious over those two primary references in combination with certain secondary references.  The patentee, of course, challenged the rejections on the merits, but also asserted that reexamination should not have been initiated with respect to one of the primary references because the reexamination request had failed to raise an SNQ.

First, the patentee noted that the reference had been considered by the original examiner during the original prosecution and listed on the patent in reexamination.  Since a proposed anticipation rejection would be based on the reference “by itself, and not in light of any other prior art,” the issue of patentability would be no different from the issues addressed by the examiner in the original prosecution.  The Board (APJs Boalick & Easthom) was not persuaded, noting that the reference “was not the basis for any rejection during the original prosecution nor did it appear that it had been considered individually by the Examiner.”  Also, since the reexamination request explained in detail how the reference anticipated the patent claims, the Board concluded that the request “had raised a substantial new question of patentability” based on the reference.  The Board also likely relied on the fact that the reference was one of 550 listed on the patent, to reach its conclusion that the anticipation issue was not previously considered by the examiner. 

The patentee also faulted the reexamination examiner for not explaining, with any specificity, the basis for his determination that the reference raised an SNQ.  But the Board found the examiner’s comments to be sufficient: specifically, his explanation (1) that the reference had not be discussed by the original examiner in either a rejection or in a statement of reason for allowance, and (2) that the reference disclosed each of the claim limitations. 

The Board also found the patentee’s argument to be procedurally defective.  Thus, the June 2010 Notice by the PTO delegating authority to the Board to review an examiner’s determination of SNQs allowed such review “if the patent owner presents the SNQ issue in its appeal brief.”  Here, the patentee did not raise the SNQ issue until its reply brief.  “Accordingly, under the express terms of the delegation, we are without authority to review the SNQ issue.” 

APJ Turner dissented from the Board decision.  Dealing first with the distinction between appeal brief and reply briefs, he found that the intent of the Notice was “to allow the Board to decide presented SNQ issues” and that the Board’s jurisdiction to consider the issue was therefore proper.

On the SNQ issue itself, APJ Turner found that the original examiner was presumed to have considered the reference by itself (i.e., considered reference as a basis for an anticipation rejection), absent “a showing … that the cited reference is being seen ‘in a new light, or in a different way, as compared with its use in the earlier … examination,’” citing the MPEP.  Moreover, APJ Turner faulted the reexamination examiner, as did the patentee, for making “no findings as to what the new teaching was…”  Further, the fact that the original examiner had not discussed the reference does mean that the reexamination request has presented that reference “in a new light.”  And although the reexamination examiner did explain the anticipation rejection, “the finding of an SNQ is a threshold issue in reexamination.”  APJ Turner therefore concluded that the reexamination examiner had not “met the burden of SNQ.”

The majority replied to APJ Turner accusing him of “exalt[ing] form over substance” since the basis for the SNQ was presented in both the reexamination request and the examiner’s rejection.  The majority added that “[t]here is no probative evidence in the record of how [the reference] was previously considered during the original prosecution other than its mere citation to the Office and listing to the face of the patent.” 

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