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,
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.
View more information at Patents Post-Grant