(79)                        DEPARTMENT OF COMMERCE
                      3510-16 Patent and Trademark Office
                        [Docket No. 980605147-8147-01]

                  Request for Comments on Interim Guidelines 
                    for Reexamination of Cases in View of 
                 In re Portola Packaging, Inc., 110 F.3d 786, 
                       42 USPQ2d 1295 (Fed. Cir. 1997) 

AGENCY: Patent and Trademark Office, Commerce.
ACTION: Notice and request for public comments.
SUMMARY: The Patent and Trademark Office (PTO) requests comments from
the public on interim guidelines that will be used by PTO personnel in
their review of requests for reexaminations and ongoing reexaminations
for compliance with the decision in In re Portola Packaging, Inc., 110
F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997).
DATES: To be ensured consideration, written comments on the interim
guidelines must be received by the PTO by September 14, 1998.
ADDRESSES: Written comments should be addressed to Commissioner of
Patents and Trademarks, Attention: Kevin T. Kramer or John M. Whealan,
Box 8, Washington, D.C. 20231. Comments may be submitted by facsimile at
(703) 305-9373. Comments may also be submitted by electronic mail
addressed to "kevin.kramer@uspto.gov" or "john.whealan@uspto.gov".
FOR FURTHER INFORMATION CONTACT: John M. Whealan or Kevin T. Kramer by
telephone at (703) 305-9035; by facsimile at (703) 305-9373; by mail
addressed to Box 8, Commissioner of Patents and Trademarks, Washington,
D.C. 20231; or by electronic mail at "john.whealan@uspto.gov" or
"kevin.kramer@uspto.gov."
SUPPLEMENTARY INFORMATION: The PTO requests comments from the public on
the following interim guidelines. These guidelines will be used by PTO
personnel in their review of requests for reexaminations and ongoing
reexaminations for compliance with the decision in In re Portola
Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997). Because
these guidelines govern internal practices, they are exempt from notice
and comment rulemaking under 5 U.S.C.    553(b)(A).            
   
Written comments should include the following information: (1) Name and
affiliation of the individual responding; and (2) an indication of
whether the comments offered represent views of the respondent's
organization or are the respondent's personal views. Where possible,
parties presenting written comments are requested to provide their
comments in machine-readable format. Such submissions may be provided by
electronic mail sent over the Internet, or on a 3.5" floppy disk
formatted for use in a Windows╠rm based computer. Preferably,
machine-readable submissions should be provided in WordPerfect╠rm 6.1
format.
   
Written comments will be available for public inspection in Suite 918,
Crystal Park 2, 2121 Crystal Drive, Arlington, Virginia. In addition,
comments provided in machine-readable format will be available through
anonymous file transfer protocol (ftp) via the Internet (address:
comments.uspto.gov) and through the World Wide Web (address:
www.uspto.gov).
   
I. Interim Guidelines for Reexamination of Cases in View of In re
Portola Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997)
   
The following guidelines have been developed to assist Patent and
Trademark Office (PTO) personnel in determining whether to order a
reexamination or terminate an ongoing reexamination in view of the
United States Court of Appeals for the Federal Circuit's decision in In
re Portola Packaging, Inc.1 These guidelines supersede and supplement
any previous guidelines issued by the PTO with respect to reexamination.
These guidelines apply to all reexaminations regardless of whether they
are initiated by the Commissioner, requested by the patentee, or
requested by a third party. When made final, these guidelines will be
incorporated into Chapter 2200 of the Manual of Patent Examining
Procedure.
   
A. Explanation of Portola Packaging
In order for the PTO to conduct reexamination, prior art must raise a
"substantial new question of patentability."2 In Portola Packaging, the
Federal Circuit held that a combination of two references that were
expressly relied upon individually to reject claims during the original
examination does not raise a substantial new question of patentability.3
The Federal Circuit also held that an amendment of the claims during
reexamination does not raise a substantial new question of
patentability.4 The court explained that "a rejection made during
reexamination does not raise a substantial new question of patentability
if it is supported only by prior art previously considered by the PTO."5
   
B. General Principles Governing Compliance with Portola Packaging
   
If prior art was previously expressly relied upon to reject a claim in a
prior related PTO proceeding,6 the PTO will not order or conduct
reexamination based only on such prior art, regardless of whether that
prior art is to be relied upon to reject the same or different claims in
the reexamination.
   
If prior art was not expressly relied upon to reject a claim, but was
cited in the record of a prior related PTO proceeding and its relevance
to the patentability of any claim was actually discussed on the record,7
the PTO will not order or conduct reexamination based only on such prior
art.
   
In contrast, the PTO will order and conduct reexamination based on prior
art that was cited but whose relevance to patentability of the claims
was not discussed in any prior related PTO proceeding.
   
C. Procedures for Determining Whether a Reexamination May be Ordered in
Compliance with Portola Packaging
   
PTO personnel must adhere to the following procedures when determining
whether a reexamination may be ordered in compliance with the Federal
Circuit's decision in Portola Packaging:
   
1. Read the reexamination request to identify the prior art on which the
request is based.
   
2. Conduct any necessary search of the prior art relevant to the subject
matter of the patent for which reexamination was requested.8
   
3. Read the prosecution histories of prior related PTO proceedings.
   
4. Determine if the prior art in the reexamination request and the prior
art uncovered in any search was:
   
(a) expressly relied upon to reject any claim in a prior related PTO
proceeding; or
   
(b) cited and its relevance to patentability of any claim discussed in a
prior related PTO proceeding.
   
5. Deny the reexamination request if the decision to order reexamination
would be based only on prior art that was (a) expressly relied upon to
reject any claim and/or (b) cited and its relevance to patentability of
any claim discussed in a prior related PTO proceeding.9
   
6. Order reexamination if the decision to order reexamination would be
based at least in part on prior art that was neither (a) expressly
relied upon to reject any claim nor (b) cited and its relevance to
patentability of any claim discussed in a prior related PTO proceeding,
and a substantial new question of patentability is raised with respect
to any claim of the patent.10
   
D. Procedures for Determining Whether an Ongoing Reexamination Must be
Terminated in Compliance with Portola Packaging
   
PTO personnel must adhere to the following procedures when determining
whether any current or future ongoing reexamination should be terminated
in compliance with the Federal Circuit's decision in Portola Packaging:
   
1. Prior to making any rejection in an ongoing reexamination, determine
for any prior related PTO proceeding what prior art was (a) expressly
relied upon to reject any claim or (b) cited and discussed.
   
2. Base any and all rejections of the patent claims under reexamination
at least in part on prior art that was neither (a) expressly relied upon
to reject any claim nor (b) cited and its relevance to patentability of
any claim discussed in any prior related PTO proceeding.
   
3. Withdraw any rejections based only on prior art that was previously
either (a) expressly relied upon to reject any claim or (b) cited and
its relevance to patentability of any claim discussed in any prior
related PTO proceeding.
   
4. Terminate reexaminations in which the only remaining rejections are
entirely based on prior art that was previously (a) expressly relied
upon to reject any claim and/or (b) cited and its relevance to
patentability of a claim discussed in any prior related PTO proceeding.11
E. Application of Portola Packaging to Unusual Fact Patterns
   
The PTO recognizes that each case must be decided on its particular
facts and that cases with unusual fact patterns will occur. In such a
case, the reexamination should be brought to the attention of the Group
Director who will then determine the appropriate action to be taken.
   
Unusual fact patterns may appear in cases in which prior art was
expressly relied upon to reject any claim or cited and discussed with
respect to the patentability of a claim in a prior related PTO
proceeding, but other evidence clearly shows that the examiner did not
appreciate the issues raised in the reexamination request or the ongoing
reexamination with respect to that art. Such other evidence may appear
in the reexamination request, in the nature of the prior art, in the
prosecution history of the prior examination, or in an admission by the
patent owner, applicant, or inventor.12
   
For example, if a textbook was cited during original examination, the
record of that examination may show that only select information from
the textbook was discussed with respect to the patentability of the
claims.13 If the reexamination request relied upon other information in
the textbook that actually teaches what is required by the claims, it
may be appropriate to rely on this other information in the textbook to
conduct reexamination.14
   
Another example involves the situation where an examiner discussed a
reference in a prior PTO proceeding, but did not either expressly reject
a claim based upon the reference or maintain the rejection based on the
mistaken belief that the reference did not qualify as prior art.15 If
the reexamination request were to explain how and why the reference
actually does qualify as prior art, it may be appropriate to conduct
reexamination.16
   
Another example involves foreign language prior art references. If a
foreign language prior art reference was cited and discussed in any
prior PTO proceeding, Portola Packaging may not prohibit reexamination
over a complete and accurate translation of that foreign language prior
art reference. Specifically, if a reexamination request were to explain
why a more complete and accurate translation of that same foreign
language prior art reference actually teaches what is required by the
patent claims, it may be appropriate to conduct reexamination.
   
Another example of an unusual fact pattern involves cumulative
references. To the extent that a cumulative reference is repetitive of a
prior art reference that was previously expressly applied or discussed,
Portola Packaging may prohibit reexamination of the patent claims based
only on the repetitive reference.17 However, it is expected that a
repetitive reference which cannot be considered by the PTO during
reexamination will be a rare occurrence since most references teach
additional information or present information in a different way than
other references, even though the references might address the same
general subject matter.
   
F. Notices Regarding Compliance with Portola Packaging
   
1. If a request for reexamination is denied under C.5. above in order to
comply with the Federal Circuit's decision in Portola Packaging, the
notice of denial should state: "This reexamination request is denied
based on In re Portola Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295
(Fed. Cir. 1997). No final patentability determination has been made."
   
2. If an ongoing reexamination is terminated under D.4. above in order
to comply with the Federal Circuit's decision in Portola Packaging, the
termination notice should state: "This reexamination is terminated based
on In re Portola Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed.
Cir. 1997). No final patentability determination has been made."
   
3. If a rejection in the reexamination has previously issued and that
rejection is withdrawn under D.3. above in order to comply with the
Federal Circuit's decision in Portola Packaging, the Office action
withdrawing such rejection should state: "The rejection is withdrawn in
view of In re Portola Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295
(Fed. Cir. 1997). No final patentability determination of the claims of
the patent in view of such prior art has been made." If multiple
rejections have been made, the Office action should clarify which
rejections are being withdrawn.
   
ENDNOTES
1. 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir.), reh'g in banc denied, 122
F.3d 1473, 44 USPQ2d 1060 (1997).

2. 35 U.S.C.    304.

3. During the original prosecution of the application which led to the
patent, the PTO had expressly rejected the claims separately based upon
the Hunter and Faulstich references. The PTO never expressly applied the
references in combination. During reexamination, Portola Packaging
amended the patent claims, and for the first time the PTO expressly
rejected the amended patent claims based upon the Hunter and Faulstich
references in combination. Despite these facts, the Federal Circuit
determined that the PTO was precluded from conducting reexamination on
those references. 110 F.3d at 790, 42 USPQ2d at 1299.

4. 110 F.3d at 791, 42 USPQ2d at 1299.

5. 110 F.3d at 791, 42 USPQ2d at 1300.

6. Prior related PTO proceedings include the original prosecution
history, any reissue prosecution history, and any previous reexamination
prosecution history of a concluded PTO proceeding.

7. The relevance of the prior art to patentability may be discussed by
either the applicant, patentee, examiner, or any third party. However,
37 C.F.R.    1.2 requires that all PTO business be transacted in
writing. Thus, the PTO cannot presume that a prior art reference was
previously relied upon to reject or discussed in a prior PTO proceeding
if there is no basis in the written record to so conclude other than the
examiner's initials or a check on an information disclosure statement.
Thus, any discussion of prior art must appear on the record of a prior
related PTO proceeding. Examples of generalized statements in a prior
related PTO proceeding that would not preclude reexamination include
statements that prior art is "cited to show the state of the art,"
"cited to show the background of the invention," or "cited of interest."

8. See 35 U.S.C.    303 ("On his own initiative, and any time, the
Commissioner may determine whether a substantial new question of
patentability is raised by patents and publication discovered by him . .
."); see also MPEP    2244 ("If the examiner believes that additional
prior art patents and publications can be readily obtained by searching
to supply any deficiencies in the prior art cited in the request, the
examiner can perform such an additional search.").

9. See Portola Packaging, Inc., 110 F.3d at 790, 42 USPQ2d at 1299
(examiner presumed to have done his job). There may be unusual fact
patterns and evidence which suggests that the PTO did not consider the
prior art that was discussed in the prior PTO proceeding. These cases
should be brought to the attention of the Group Director. For a
discussion of the treatment of such cases, see section E above.

10. If not specified, a reexamination generally includes all claims.
However, reexamination may be limited to specific claims. See 35 U.S.C. 
  304 (authorizing the power to grant reexamination for determination of
a "substantial new question of patentability affecting any claim of a
patent.") (emphasis added). Thus, the Commissioner may order
reexamination confined to specific claims. However, reexamination is not
necessarily limited to those questions set forth in the reexamination
order. See 37 C.F.R.    1.104(a) ("The examination shall be complete
with respect both to compliance of the application or patent under
reexamination with the applicable statutes and rules and to the
patentability of the invention as claimed. . . .").

11. The Commissioner may conduct a search for new art prior to
determining whether a substantial new question of patentability exists
prior to terminating any ongoing reexamination proceeding. See 35 U.S.C.
   303. See also 35 U.S.C.    305 (indicating that "reexamination will
be conducted according to the procedures established for initial
examination," thereby suggesting that the Commissioner may conduct a
search during an ongoing reexamination proceeding).

12. See 62 Fed. Reg. 53,151, 53,191 (October 10, 1997) (to be codified
at 37 C.F.R.    1.104(c)(2)).

13. The file history of the prior PTO proceeding should indicate which
portion of the textbook was previously considered. See 37 C.F.R.   
1.98(a)(2)(ii) (an information disclosure statement must include a copy
of each "publication or that portion which caused it to be listed")
(emphasis added).

14. However, a reexamination request that merely provides a new
interpretation of a reference already previously expressly relied upon
or actually discussed by the PTO does not create a substantial new
question of patentability.

15 . For example, the examiner may have not believed that the reference
qualified as prior art because: (i) the reference was undated; (ii) the
applicant submitted a declaration believed to be sufficient to antedate
the reference under 37 C.F.R.    1.131; or (iii) the examiner attributed
an incorrect filing date to the claimed invention.

16. For example, the request could: (i) verify the date of the
reference; (ii) undermine the sufficiency of the section 131
declaration; or (iii) explain the correct filing date accorded a claim.

17. For purposes of reexamination, a cumulative reference that is
repetitive is one that substantially reiterates verbatim the teachings
of a reference that was either previously expressly relied upon or
discussed in a prior PTO proceeding even though the title or the
citation of the reference may be different.

June 9, 1998                                                BRUCE A. LEHMAN
                                        Assistant Secretary of Commerce and
                                     Commissioner of Patents and Trademarks

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