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BPAI to Review Disputed SNQ Determinations in Ex Parte Patent Reexamination
Last Friday we explained the case of Ex parte Yasukochi et al, in which the Patentee argued that a rejection applied in reexamination was considered during original prosecution, and thus, could not constitute an SNQ. (The rejection at issue did not appear in the original request for reexamination but was newly applied by the Examiner during the reexamination). On appeal, the BPAI refused to consider the issue, taking the position that the propriety of an SNQ is a question of procedure that must be addressed by petition. The decision seemed to be at odds with In re Recreative Technologies Corp., 83 F.3d 1394, 38 USPQ2d 1776 (Fed. Cir. 1996) as well as In re Portola Packaging Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997), which both considered the question of an appropriate SNQ in patent reexamination.
Under the BPAI’s recent reasoning, the patent owner should have filed a petition under 37 CFR § 1.181 to the Director of the CRU when the examiner initially raised the new rejection. Of course, such a petition would now be untimely (since more than two months have elapsed since the rejection was made).
Upon second thought, the USPTO has determined that issues Read the rest of this entry »
