Tuesday, February 26, 2013

Conservative approach by Fish & Richardson carries day in Re-exam 95/000,449

In Inter partes re-exam 95/000,449 , the first issue was

Third Party Requester identifies several points that they contend were “misapprehended or overlooked” in rendering the Decision. See 37 C.F.R. § 41.79(b). We address them below.

● “The Patent Office must provide an explanation as to why claims from this reexamination having all of the same language from claim 1 are deemed obvious, yet claim 1 is not.” Req. Reh‟g 1.

How did this happen?

Requester compared claim 1 and claims 40 and 41, and showed that claims 40 and 41 simply incorporated additional limitations to claim 1, and thus were narrower than claim 1. Req. Reh‟g 2-3. Yet, claim 1 was determined by the Examiner to be patentable over other prior art. Examiner„s Determination under 37 CFR 41.77(d), p. 5, “Current Status of the Claims”; Board Decision, p. 16.
As argued by Requester, there appears to be a contradiction in the record: if claims 40 and 41 are not patentable over the prior art cited in Rejections A-D, then how can broader claim 1 be patentable? The discrepancy arose procedurally because the addition of new claims 40 and 41 by Patent Owner prompted Requester to propose new rejections. See Third Party Requester Comments after Patent Owner‟s Request to Reopen Prosecution (July 5, 2011). Requester did not apply these new rejections to claim 1 because it was procedurally uncertain whether they were permitted to do so at this stage in the proceeding where the prosecution had only been opened for the purpose of making a determination of the patentability of claim 1 over an existing rejection. See id. at 50. Requester stated: “In an effort to avoid any appearance of non-compliance, the Requester does not formally submit these four grounds for rejection against original claim 1 but rather leaves such a consideration to the discretion of the Patent Office.” Id. Initially, the Examiner considered the proposed rejections as to claims
40 and 41 and adopted them, but did not apply the rejections to claim 1 which is broader. While procedurally it may be have been proper for the Examiner to proceed in this way, we agree with the Requester that by adopting the rejections A-D of claims 40 and 41 in the Examiner‟s Determination under 37 CFR § 41.77(d), and not of the broader claim 1 which has the same but fewer limitations, there is an open question of whether claim 1 is unpatentable over this same prior art, and should have been so rejected.

The Board reversed the examiner on this point and entered new grounds of rejection [37 C.F.R.
§ 41.77(b)-(g). ] The cecsion also noted:

Any request to reopen prosecution before the examiner under 37 C.F.R. § 41.77(b)(1) shall be limited in scope to the “claims so rejected.” Accordingly, a request to reopen prosecution is limited to issues raised by the new ground(s) of rejection entered by the Board. A request to reopen prosecution that includes issues other than those raised by the new ground(s) is unlikely to be granted. Furthermore, should the patent owner seek to substitute claims, there is a presumption that only one substitute claim would be needed to replace a cancelled claim.
A requester may file comments in reply to a patent owner response. 37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall be limited in scope to the issues raised by the Board's opinion reflecting its decision to reject the claims and the patent owner's response under paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not permitted as a matter of right. A newly proposed rejection may be appropriate if it is presented to address an amendment and/or new evidence properly submitted by the patent owner, and is presented with a brief explanation as to why the newly proposed rejection is now necessary and why it could not have been presented earlier.

Elsewhere in the decision:

For the reasons stated in the Decision, we do not agree that sufficient evidence has been provided that Bray‟s drawings are drawn to scale and necessarily describe the lock as covering a portion of the bone screw holes. “Inherent anticipation requires that the missing descriptive material is „necessarily present,‟ not merely probably or possibly present, in the prior art.” Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002).

MINNEAPOLIS, MN 55440-1022


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