A Pointer from Reexamination Practice

Scott Daniels | November 29, 2012

Not every grievance against an examiner in reexamination can be resolved through appeal to the Board.  In fact, the Board’s appellate jurisdiction is limited to “final rejection[s] of any claim by the primary examiner … .”  35 U.S.C. § 134(b).  Stated differently, a patent owner “may appeal … with respect to any decision adverse to the patentability of any original or proposed amended or new claim of the patent.”  35 U.S.C. § 315(a)(1).

In Weatherford Int’l v. Tesco, 95/000,418 decided yesterday, the patent owner found that it could not contest, by appeal to the Board, the examiner’s refusal during the prosecution of the reexamination to enter a claim amendment.  The Board explained that the patent owner’s “recourse was to seek review of the Examiner’s decision via petition to the Director, not appeal to the Board.”

Nonetheless, the case ended happily for the patent owner – the Board reversed the examiner’s prior art rejection of the claims, based on the patent owner’s technical arguments and a § 131 Declaration removing one of the prior art references.  Regarding the Declaration, the Board concluded that although “the Examiner takes the view that the evidence is insufficient [to show an earlier reduction of the claimed invention to practice], it is not apparent what claim features the Examiner considers absent or unaccounted for in connection with the Schneider Declaration and evidence submitted therewith.”

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