Expanded BPAI Panel Shoots Down Repackaged SNQSince In re Swanson, the standard for establishing a Substantial New Question of Patentability (SNQ) in a patent reexamination has been quite liberal. A requester need only establish that the submitted art be presented in a new light. Thus, previously considered prior art can be re-used, if applied to the claims in a slightly different manner than that of the original prosecution. Understandably, since Swanson, arguing that a rejection adopted by the Office in patent reexamination does not in fact present the previously considered art in a new light has been an uphill battle.Yesterday, the USPTO found a rare SNQ it didn’t like….and pigs were seen flying down Dulany Street.U.S. Patent 6,780,079 is the subject of litigation styled MuzzyProducts Corporation v. Primos Inc., U.S. District Court of Georgia 4:05cv182. This case was stayed in 2007 pending the outcome of the reexamination, 90/008,081. The ‘079 Patent relates to a devices used in hunting for attracting game (game calling).Original ProsecutionDuring the original examination of the ‘868 application which eventually issued as the ‘079 patent, the claims were rejected under 35 U.S.C. § 103(a) as obvious over prior art Patent No. 5,607,091 “Musacchia”. The Examiner stated that while Musacchia does not disclose a hunting device for producing sounds that has a unitary construction, “unitary construction of the hunting device would have been obvious to one of ordinary skill in the art, since this would aid in the portability and usage of the device.”In response, the inventor, Mr. John Musacchia Jr., (prior art invented by his father) filed a Declaration seeking to establish non-obviousness through long-felt need.After extensive prosecution, the original Examiner maintained the rejection of the claims over Musacchia stating that “Musacchia discloses the claimed invention except for the game call device constructed as one piece” and that “[i]t would have been obvious to one having ordinary skill in the art at the time the invention was made to form the game call device as one piece, since it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. Howard v. Detroit Stove Works, 150 U.S. 164 (1893).”After further prosecution, the Applicant appealed to the Board. The original Board panel reversed the original Examiner’s rejection stating that there is no per se rule that “forming several pieces integrally as a one-piece structure would have been obvious . . . [,]” and “in this case, one must determine if it would have been obvious to one of ordinary skill in the art at the time the invention was made to make Musacchia’s separate call and platform as a one-piece structure.” Subsequently, the application was then allowed by the examiner.Request for ReexaminationIn the request for reexamination, the Requester argued that the Declaration filed during the prosecution of the ‘079 patent was only considered as to whether it demonstrated long-felt need, and not considered by either the original Examiner or the original Board panel as including admissions.The USPTO adopted this reasoning explaining the admissions to be statements made by the Patent Owner in his declaration and remarks that identify the long-unfelt need. Specifically, these remarks explain that a one piece design was considered desirable by those of skill in the art and would predictably result in preventing the loss of game calls, maintaining a true sound, and reducing the cost of the game call.In this regard, the Office stated that, when considered as admissions, the statements of the Declarationprovide evidence of obviousness, which was specifically pointed out as missing in the prior examination, and therefore, cast Musacchia ‘091 in a new light. The teachings of Musacchia ‘091 considered in conjunction with the admissions are a new question of patentability not previously considered. As such, the teachings of Musacchia ‘091, in conjunction with the admissions in the record, raise a substantial new question of patentability.Board DecisionThe Board remanded (decision here) the reexamination back to the Central Reexamination Unit for termination explaining that:While the CRU Examiner may be correct in asserting that the original Examiner and the previous Board panel considered the statements in the Declaration only in the context of long-felt need, these statements do not alter the purpose for which the CRU Examiner now relies on the Musacchia reference for finding the existence of a SNQ. In particular, the CRU Examiner does not apply the statements in the Declaration to gain any new understanding as to the teachings of the Musacchia reference, but rather, uses the statements merely to reach a different legal conclusion as to obviousness. While the CRU Examiner asserts that the statements in the Declaration casts Musacchia in a “new light,” the CRU Examiner’s position suggests that the CRU Examiner is viewing the Declaration, not the Musacchia reference, in a new light.PPG Comment : The Requester gets an “A” for effort.Essentially, this reexamination was pursued to leverage the perceived change in obviousness standards caused KSR International Co. v. Teleflex Inc (‘079 Patent issued pre-KSR). Ths request was submitted under the guise of declaration admissions in the hopes that applying KSR to the same art would yield different results. Of course, MPEP 2216 makes it very clear that KSR does not impact the SNQ analysis.**Fortunately for the patent owner, as of June 25, 2010, the Board may now properly review the examiner’s determination that a SNQ exists. Prior to June 25, 2010 the Patent Owner’s argument would have been rejected by the BPAI as a petitionable issue.

Since In re Swanson, the standard for establishing a Substantial New Question of Patentability (SNQ) in a patent reexamination has been quite liberal. A requester need only establish that the submitted art be presented in a new light. Thus, previously considered prior art can be re-used, if applied to the claims in a slightly different manner than that of the original prosecution. Understandably, since Swanson, arguing that a rejection adopted by the Office in patent reexamination does not in fact present the previously considered art in a new light has been an uphill battle.

Yesterday, the USPTO found a rare SNQ it didn’t like….and pigs were seen flying down Dulany Street.

U.S. Patent 6,780,079 is the subject of litigation styled MuzzyProducts Corporation v. Primos Inc., U.S. District Court of Georgia 4:05cv182. This case was stayed in 2007 pending the outcome of the reexamination, 90/008,081. The ‘079 Patent relates to a devices used in hunting for attracting game (game calling).

Original Prosecution

During the original examination of the ‘868 application which eventually issued as the ‘079 patent, the claims were rejected under 35 U.S.C. § 103(a) as obvious over prior art Patent No. 5,607,091 “Musacchia”. The Examiner stated that while Musacchia does not disclose a hunting device for producing sounds that has a unitary construction, “unitary construction of the hunting device would have been obvious to one of ordinary skill in the art, since this would aid in the portability and usage of the device.”

In response, the inventor, Mr. John Musacchia Jr., (prior art invented by his father) filed a Declaration seeking to establish non-obviousness through long-felt need.

After extensive prosecution, the original Examiner maintained the rejection of the claims over Musacchia stating that “Musacchia discloses the claimed invention except for the game call device constructed as one piece” and that “[i]t would have been obvious to one having ordinary skill in the art at the time the invention was made to form the game call device as one piece, since it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. Howard v. Detroit Stove Works, 150 U.S. 164 (1893).”

After further prosecution, the Applicant appealed to the Board. The original Board panel reversed the original Examiner’s rejection stating that there is no per se rule that “forming several pieces integrally as a one-piece structure would have been obvious . . . [,]” and “in this case, one must determine if it would have been obvious to one of ordinary skill in the art at the time the invention was made to make Musacchia’s separate call and platform as a one-piece structure.” Subsequently, the application was then allowed by the examiner.

Request for Reexamination

In the request for reexamination, the Requester argued that the Declaration filed during the prosecution of the ‘079 patent was only considered as to whether it demonstrated long-felt need, and not considered by either the original Examiner or the original Board panel as including admissions.

The USPTO adopted this reasoning explaining the admissions to be statements made by the Patent Owner in his declaration and remarks that identify the long-unfelt need. Specifically, these remarks explain that a one piece design was considered desirable by those of skill in the art and would predictably result in preventing the loss of game calls, maintaining a true sound, and reducing the cost of the game call.

In this regard, the Office stated that, when considered as admissions, the statements of the Declaration

provide evidence of obviousness, which was specifically pointed out as missing in the prior examination, and therefore, cast Musacchia ‘091 in a new light. The teachings of Musacchia ‘091 considered in conjunction with the admissions are a new question of patentability not previously considered. As such, the teachings of Musacchia ‘091, in conjunction with the admissions in the record, raise a substantial new question of patentability.

Board Decision

The Board remanded (decision here) the reexamination back to the Central Reexamination Unit for termination explaining that:

While the CRU Examiner may be correct in asserting that the original Examiner and the previous Board panel considered the statements in the Declaration only in the context of long-felt need, these statements do not alter the purpose for which the CRU Examiner now relies on the Musacchia reference for finding the existence of a SNQ. In particular, the CRU Examiner does not apply the statements in the Declaration to gain any new understanding as to the teachings of the Musacchia reference, but rather, uses the statements merely to reach a different legal conclusion as to obviousness. While the CRU Examiner asserts that the statements in the Declaration casts Musacchia in a “new light,” the CRU Examiner’s position suggests that the CRU Examiner is viewing the Declaration, not the Musacchia reference, in a new light.

PPG Comment : The Requester gets an “A” for effort.

Essentially, this reexamination was pursued to leverage the perceived change in obviousness standards caused KSR International Co. v. Teleflex Inc (‘079 Patent issued pre-KSR). Ths request was submitted under the guise of declaration admissions in the hopes that applying KSR to the same art would yield different results. Of course, MPEP 2216 makes it very clear that KSR does not impact the SNQ analysis.

**Fortunately for the patent owner, as of June 25, 2010, the Board may now properly review the examiner’s determination that a SNQ exists. Prior to June 25, 2010 the Patent Owner’s argument would have been rejected by the BPAI as a petitionable issue.