Marine Polymer and Section 112 Rejections in Reexamination

Scott Daniels | October 27, 2011

The CAFC’s decision last month in Marine Polymer – granting intervening rights where the patentee “effectively amends” its claims by narrowing argument in reexamination – is expected to have a major impact on infringement litigation.  What might not be expected, however, is the impact that Marine Polymer could have on reexamination.

A cardinal principle of reexamination practice is that the only possible rejections are prior art rejections based on patents or printed publications.  The patentee opens the door to Section 112 rejections only when it amends its claims or adds new claims – and even then, the Section 112 rejections are limited to the claim limitations amended and the new claims.  That measure of comfort enjoyed by the patentee might be lost if the PTO follows the holding of the Board’s decision issued today in Nissim v Time Warner, 95/000,312  There, the panel determined that the rationale of “amendment in effect” from Marine Polymer calls for Section 112 review of claim limitations that effectively narrowed in scope by argument.

The patentee had previously presented to the Examiner a questionable construction of its claims in an effort to distinguish them from the disclosure of the prior art.  The Requester proposed that the claims, having been “effectively amended by argument,” be rejected as lacking Section 112 support in the specification.  The Examiner refused to adopt such a rejection, but on appeal, the Board panel sided with the Requester.

[W]e deem amending the claims by disavowal or estoppel as an amendment under 35 U.S.C. § 314, and such amendment triggers a full 35 U.S.C. § 112 review under 37 C.F.R. §§ 1.552(a) and 1.906(a). Cf. Marine Polymer, 2011 WL 4435986. Under such a review, we would find a § 112 written description rejection of the amended claims to be strongly warranted.

(Emphasis added).  The panel added that “the Examiner could have made this written description rejection solely based on Appellant’s proposed constructions (amendments), even if such claim construction itself was not adopted by the Examiner.”  It then stumbled a bit by stating that “such a rejection would be for the purposes of compact prosecution, would only be advisory in nature, and would be discretionary.”  Thus, the panel did “not deem to be an error any decision not to make such a rejection.”

Today’s Board decision, of course, is not precedential.  And it does leave to the Examiner’s discretion the option of reviewing under Section 112 claims amended by argument.  Still, the full impact the CAFC’s analysis in Marine Polymer of “what is an amendment” is difficult to estimate.




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