By Stephen G. Kunin
| June 25, 2010
Gun-BackfireHisamitsu Pharmaceutical requested ex parte reexamination of only claims 1, 3 and 6 of its own U.S. Patent No. 7,034,083 (the “’083 Patent”) based upon certain prior art.  However, the USPTO ordered reexamination on all claims (i.e., claims 1-6) of the ‘083 Patent.

Generally, if a requester chooses not to request reexamination for a claim, that claim will typically not be reexamined. Yet, the decision to reexamine any claim for which reexamination has not been requested lies within the sole discretion of the Office. See MPEP 2240; Sony Computer Entertainment America Inc. v. Dudas, 85 USPQ2d 1594 (E.D. Va 2006).

During reexamination of the '083 Patent the Patentee placed the features of claim 2 into claim 1. In response to the amendment, the examiner again rejected claims 1 and 3-6 over a reference cited in the original prosecution. On appeal, the BPAI in Ex parte Yasukochi et al. affirmed the examiner’s rejection of claims 1, and 3-6.

In its decision, the BPAI refused to consider the appellant’s argument that the rejection of the claims over old art was improper, because it did not raise a substantial new question of patentability (SNQ), holding that the question of whether an SNQ exists is a petitionable issue and not an appealable issue.

In order to properly contest the new rejection, 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.  However, such a petition would now be considered as untimely, since more than two months have elapsed since the rejection was made.  Moreover, if the examiner can characterize the technical features of the old art in a new light, reexamination over the previously considered prior art would not be precluded.

The BPAI decision also expressly refused to allow the patent owner to rely upon disclaimer of the original prosecution history in interpreting the claims at issue noting that “disavowal of scope, no matter how clearly stated, in lieu of an amendment to the claims.” This is an especially disturbing statement, and at odds with previous BPAI holdings, more on this topic Monday.
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