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 relating to an SNQ determination, while still considered a procedural question, are to be delegated the BPAI for a final determination. In the June 25, 2010 Federal Register Notice, the Office has clarified that assuming an SNQ is contested prior to appeal, either by petition or Patentee response, that the BPAI will now finally decide the issue. Likewise, for reexaminations pending prior to 6/25/10, if the issue was not raised prior to appeal, the Patentee may still raise the issue with the BPAI.

This change has no impact on inter partes reexamination proceedings as an SNQ determination is final and non-appealable by operation of statute (35 USC 312(c)).

Since this change was made effective as of last Friday, it looks like ex parte Yasukochi may at least obtain a rehearing on the SNQ aspect of their appeal.