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Dispute at PTO Board over “Substantial New Question” Issue
| 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.
