bigq copyg class=”alignleft size-full wp-image-1265″ title=”bigq copy” src=”” alt=”bigq copy” width=”218″ height=”176″ />What Exactly is a Substantial New Question of Patentability Anyway?

As noted in Part I of this two part series, the purpose of a request for patent reexamination is quite simple, to present SNQs relative to some or all of the claims of an issued patent.  Certainly there are numerous grounds to challenge a patent in a Federal District Court.  However, one must realize that an SNQ is a particular subset of the universe of available grounds applied at the USPTO.  The appropriate subset is explicitly identified by the reexamination statutes.  Simply stated, proper SNQs must be based on patents and/or printed publications only.  So, a proper SNQ cannot embrace arguments relating to public use/on sale bar, inequitable conduct, 35 U.S.C §112, or statutory subject matter, for example.

For “a substantial new question of patentability” to be present, it is only necessary that: (A) the prior art patents and/or printed publications raise a substantial new question of patentability regarding at least one claim, i.e., the teaching of the (prior art) patents and printed publications is such that a reasonable examiner would consider the teaching to be important in deciding whether or not the claim is patentable; and (B) the same question of patentability as to the claim has not been decided by the Office in a previous examination or pending reexamination of the patent or in a final holding of invalidity by the Federal Courts in a decision on the merits involving the claim. It is not necessary that a “prima facie” case of unpatentability exist as to the claim in order for “a substantial new question of patentability” to be present as to the claim. Thus, “a substantial new question of patentability” as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or rendered obvious in view of, the prior art patents or printed publications. MPEP 2240/2640

In our last discussion, in addition to the above distinctions, we identified common misconceptions and practitioner errors in preparing reexamination requests.  Yet, assuming you have omitted such materials, and have a proper basis for your SNQ, what are some best practices in presenting SNQs to the Office?

 1.     Realize that you cannot give the USPTO “eggs” and expect them to make you “an omelet.”

An effective reexamination request is not submitted as a “fishing expedition.”  In accordance with 37 C.F.R. § 1.515, The Office has 90 days to make a determination by statute to grant or deny a request, so, there is little time, or obligation on the part of the Office to figure out your SNQ absent appropriate written guidance.  

In this regard, 37 C.F.R. § 1.510 (b) (2) requires that an identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art be provided for every claim for which reexamination is requested.  In short, sending the Office art without explanation, or insufficient explanation will lead to a denial or notice of an incomplete request. 

Although not required, detailed claim charts will help focus your presentation and can be submitted as an Appendix.  Ideally, however, your proposed rejections are best presented in a format and style which mimics an Office Action.  Therefore, each reference should be separately explained relative to the applicable claim, and if the proposed rejection is under 35 U.S.C. § 103, and articulated rationale for the combination of the references should be provided. 

Think of it this way, if your request for reexamination had been sent to you as an Office Action in an unrelated case, would it appear competent, or would you start “pulling your hair out” at the unsupported positions and immediately call the Examiner’s supervisor?  If viewed with this perspective, you will have few problems.

 2.      Even if satisfying (1) above, a SNQ may still be improper (READ MPEP 2216/2616).

A proper SNQ is not only adequately explained and of a proper basis, but it also must be new (i.e., non-cumulative with respect to previously considered art).  The substantial new question of patentability may be based on art previously considered by the Office if the reference is presented in a new light or a different way that escaped review during earlier examination.

One helpful method for accomplishing this goal is to summarize the prosecution history and identify the earlier examiner’s statement of reasons for allowance.  Should your proposed SNQ arguably refute the reasons for allowance, you are well on your way to demonstrating a lack of cumulativeness.

With respect to previously considered art, simply citing to In re Swanson for the proposition that old art can be considered is inadequate.  If you are applying “old art,” you should make every effort to compare and contrast the earlier considered explanation of the pertinency of the references with your proposed SNQ.  Likewise, if you are relying on a different aspect of the old reference than considered by the Office, you should make this distinction absolutely clear.[1]

 3.     Realize that if you are requesting reexamination of a patent already subject to reexamination, you must compare your                    proposed SNQs to that used to initiate the ongoing reexamination to establish non-cumulativeness. 

In case a patent reexamination is ongoing, a second reexamination request will not be granted for the same SNQ.  (although that was once the case).   As such, be sure to discuss the newly proposed SNQs relative to those presented in the ongoing reexamination proceedings. MPEP 2240/2640

While the above practice tips are far from exhaustive, following these simple guidelines, as well as the guidance of Part I of this two part series will greatly enhance the effectiveness of your reexamination requests.


[1] If an old reference was simply listed in the prosecution history without comment, your proposed SNQ discussing the old reference will be a new light by definition.