[Federal Register: June 15, 1998 (Volume 63, Number 114)]
[Notices]
[Page 32646-32648]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr15jn98-28]
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DEPARTMENT OF COMMERCE
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.
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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, DC 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,
DC 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 based computer. Preferably,
machine-readable submissions should be provided in
WordPerfect 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\
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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 CFR 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
[[Page 32648]]
may determine whether a substantial new question of patentability is
raised by patents and publication discovered by him . * * *''); see
also MPEP Sec. 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 CFR 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 FR 53,151, 53,191 (October 10, 1997) (to be codified
at 37 CFR Sec. 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 CFR
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 CFR 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.
Dated: June 9, 1998.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and
Trademarks.
[FR Doc. 98-15778 Filed 6-12-98; 8:45 am]
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