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
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