DEPARTMENT OF COMMERCE
Patent and Trademark Office
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
SUMMARY: The Patent and Trademark Office (PTO) is publishing the final
version of guidelines to be used by Office 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 under 5 U.S.C.
553(b)(A).
DATES: The guidelines are effective as of publication in the FEDERAL
REGISTER.
FOR FURTHER INFORMATION CONTACT: John M. Whealan 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".
SUPPLEMENTAL INFORMATION:
I. Discussion of Public Comments
Comments were received by the PTO from eight individuals and one bar
association in response to the 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),
published June 15. 1998 (63 Fed. Reg. 32646). In general, six of the
eight individual comments were critical of the guidelines; one
individual comment was partially supportive of the guidelines and one
suggested a legislative change; the comments from the bar association
were in complete support of the guidelines. All of the comments have
been carefully considered.
A. Below is a listing of comments along with a corresponding Office
response explaining why each has not been adopted:
(1) Comment: Most of the critical comments suggest the Office is
misinterpreting the "holding" of Portola Packaging. These comments
believe Portola Packaging held that (i) the Office may not initiate a
reexamination proceeding based solely on prior art previously cited
during prosecution of the application which matured into the patent,
regardless of whether that art was discussed, and (ii) no rejection can
be made during a subsequent reexamination based solely on prior art
cited during prosecution of the application which matured into the
patent, even if that prior an was not previously discussed. Response:
The Office views these positions as dicta and not the "holding" of
Portola Packaging.
The Federal Circuit recently explained the difference between the
holding of a case and dicta. See In re McGrew, 120 F.3d 1236, 1238-39,
43 USPQ2d 1632, 1635 (Fed. Cir. 1997). The Court explained that dicta
consists of the statements in an opinion "upon a point or points not
necessary to the decision of the case." Id. at 1238, 43 USPQ2d at 1635.
The Court further explained that since "dictum is not authoritative," it
need not be followed. Id.
The Office considers the portions of the Portola Packaging opinion
relied on by the critical commenters as dicta and not the holding of the
case. In Portola Packaging, the prior art relied upon in the
reexamination (that was found by the Court to be improperly used) was
not only cited, but it was also discussed and applied to reject claims
during prosecution of the application which matured into the patent.
Thus, Portola Packaging holds that a rejection in a reexamination
proceeding may not be based solely on prior art that was previously
applied to reject claims during prosecution of the application which
matured into the patent. Portola Packaging does not, however, hold (as
suggested by the commenters) that prior art in the record of the
application that matured into the patent, which was not discussed, may
never form the sole basis for a rejection during a subsequent
reexamination proceeding. Such a broad reading of Portola Packaging
would encourage the practice of applicants citing numerous references
during prosecution of an application to preclude subsequent
reexamination based on those references. This practice of flooding the
Office with references during prosecution of an application in order to
prevent their subsequent use in reexamination could overwhelm the
examination process and limit the effectiveness of reexamination.
(2) Comment: One comment went further and suggested that Portola
Packaging precluded reexamination based on any reference which is not
new art. Response: The Office disagrees with this comment in view of the
interpretation of the holding of Portola Packaging set forth in the
preceding paragraph.
(3) Comment: One comment suggested the elimination of the unusual fact
pattern situations exemplified in Part E, since in their opinion,
Portola Packaging holds that previously cited art may never be relied on
in a reexamination. Response: Once again, the Office views this position
as dictum and not the holding of the case.
(4) Comment: One comment suggested the Office should seek a legislative
overruling of the "holding" of Portola Packaging. Response: As the
Office is following the holding of the case (as set forth above), the
case need not be overruled. However, changes regarding the type of prior
art that may be considered in reexamination proceedings may be proposed
in upcoming legislation.
(5) Comment: One comment suggested that the form notices set forth in
Section F may prompt an applicant to file a reissue application to
resolve any issues that are precluded from resolution during
reexamination. Response: The form notices in Section F have been
modified to indicate that no patentability determination has been made
in the reexamination (over prior art precluded by Portola Packaging).
The notices do not suggest the filing of a reissue application. This of
course would be an option open to the patent owner as Portola Packaging
does not apply to reissue applications.
(6) Comment: One comment suggested that the practice of an examiner
placing his initials next to a reference on an information disclosure
statement (IDS), citation form PTOL-1449, or its equivalent, is
sufficient to indicate that an examiner has considered the reference.
Response: Where the IDS citations are submitted but not described, the
examiner is only responsible for cursorily reviewing the references. The
initials of the examiner on the PTOL-1449 indicate only that degree of
review unless the reference is either applied against the claims, or
discussed by the examiner as pertinent art of interest, in a subsequent
office action.
As noted in (1) above, the prior art relied upon in the reexamination in
Portola Packaging was not merely cited and initialed, but it was
discussed and applied to reject claims in the application that matured
into the patent. Portola Packaging does not hold that prior art that was
of record but not discussed may not form the sole basis of a rejection
of the claims. Accordingly, under Portola Packaging the mere presence of
the examiner's initials next to a reference on an IDS citation does not
preclude consideration of the reference in a subsequent reexamination
proceeding.
(7) Comment: One comment suggested that the guidelines were inconsistent
with In re Hiniker Co., 150 F.3d 1362, 47 USPQ2d 1523 (Fed. Cir. 1998).
Response: In Hiniker, the Federal Circuit affirmed a rejection in a
reexamination proceeding which was based, in part, on new prior art. See
150 F.3d at 1367, 47 USPQ2d at 1527. Hiniker, therefore, does not
preclude a rejection in a reexamination proceeding based on prior art
that was cited but never discussed during the prosecution of the
application which matured into the patent, since such a situation was
not presented to the Court.
In Hiniker, the Court did state that Portola Packaging "held that prior
art that was before the original examiner could not support a
reexamination proceeding despite the fact that it was not the basis of a
rejection in the original prosecution; as long as the art was before the
original examiner, it would be considered `old art.'" 150 F.3d at
1365-66, 47 USPQ2d at 1526 (citing Portola Packaging) (emphasis added).
It is undisputed, however, that the prior art relied on to reject the
claims in the reexamination proceeding in Portola Packaging was the same
prior art that was relied on to reject claims during the prosecution of
the application which matured into the patent. See Portola Packaging,
110 F.3d at 787, 42 USPQ2d at 1296-97. Accordingly, the Hiniker panel
was not addressing the issue of prior art that was not discussed when it
characterized the holding of Portola Packaging since it is clear that an
"old art" rejection was at issue in Portola Packaging, whereas a "new
art" rejection was at issue in Hiniker.
(8) Comment: One comment suggested that reexaminations should be the
same as all other examinations. Response: Reexamination is based on
patents and printed publications. Thus the scope of reexamination is
narrower than that involved in the examination of a patent application.
Certain issues of patentability that may be considered during
prosecution of the application may not be considered during
reexamination of the patent. If the patent owner desires consideration
of questions of patentability not appropriate for reexamination, those
issues can only be addressed in a reissue application filed under 35
U.S.C. 251.
(9) Comment: One comment queried whether applicants will now be required
to discuss all references listed on an IDS statement. Response: There is
no such requirement in the current rules. Under the guidelines set forth
herein, however, references that are not discussed during the
prosecution of an application which matures into a patent will not be
precluded from consideration in a subsequent reexamination proceeding.
B. The following comments have been adopted to the extent indicated in
the corresponding Office response:
(1) Comment: Two comments suggested that the statements in Section F
to be used in denying or terminating a reexamination were misleading and
could cast a shadow on the validity of the patent. One comment further
proposed changing the language to, "No new patentability determination
has been made in this reexamination proceeding." Response: The Office
has considered these suggestions, and in an attempt to be more clear,
has modified the language in Section F to be used in denying or
terminating a reexamination proceeding.
C. The following comments supported the interim guidelines and suggested
no changes:
(1) Comment: The comments from the bar association supported the
guidelines as consistent with Portola Packaging and the legislative
intent of the reexamination process to resolve validity questions
efficiently and economically. In addition, the bar association felt the
guidelines were consistent with the Federal Circuit decision in In re
Lonardo 119 F.3d 960.43 USPQ2d 1262 (Fed. Cir. 1997), cert. denied, 118
S. Ct. 1164 (1998).
(2) The bar association also commented that the guidelines (and in
particular the unusual fact patterns set forth in Section E) are
consistent with the rebuttable presumption of administrative correctness
relied on by the Court in Portola Packaging. Courts presume that
Government officials have properly discharged their duties, absent clear
evidence to the contrary. Thus, since the presumption of administrative
correctness is rebuttable, the guidelines properly provide for
reexamination based on a previously considered reference where the
evidence clearly shows that the examiner did not appreciate the issue
raised in the reexamination request during the prosecution of the
application that matured into the patent.
II. 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. These guidelines will be incorporated into
Chapter 2200 of the Manual of Patent Examining Procedure (MPEP).
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
relied upon individually to reject claims during the prosecution of the
application which matured into the patent does not raise a substantial
new question of patentability in a subsequent reexamination of the
patent.3 The Federal Circuit also held that an amendment of the claims
during reexamination does not justify using old prior art to 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 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 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 may 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 all prior related PTO proceedings.
4. Determine if the prior art in the reexamination request and the prior
art found in any search was:
(a) 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, in a prior related PTO
proceeding, (a) relied upon to reject any claim, and/or (b) cited and
its relevance to patentability of any claim discussed.9
6. Order reexamination if the decision to order reexamination would be
based at least in part on prior art that was, in a prior related PTO
proceeding, neither (a) relied upon to reject any claim, nor (b) cited
and its relevance to patentability of any claim discussed 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) 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, in any prior related PTO
proceeding, neither (a) relied upon to reject any claim, nor (b) cited
and its relevance to patentability of any claim discussed.
3. Withdraw any rejections based only on prior art that was, in any
prior related PTO proceeding, previously either (a) relied upon to
reject any claim, or (b) cited and its relevance to patentability of any
claim discussed.
4. Terminate reexaminations in which the only remaining rejections are
entirely based on prior art that was, in any prior related PTO
proceeding, previously (a) relied upon to reject any claim, and/or (b)
cited and its relevance to patentability of a claim discussed.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 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 prosecution of the
application which matured into the patent, 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 a
subsequent 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 order
and/or conduct reexamination.14
Another example involves the situation where an examiner discussed a
reference in a prior PTO proceeding, but did not either 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 rely on the
reference to order and/or 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 rely on the foreign language
prior art reference to order and/or 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 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 reexamination 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 patentability determination has been
made in this reexamination proceeding."
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
Notice of Intent to Issue a Reexamination Certificate should state:
"This reexamination is terminated based on In re Portola Packaging.
Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997). No patentability
determination has been made in this reexamination proceeding."
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 patentability determination of the claims of the
patent in view of such prior art has been made in this reexamination
proceeding." If multiple rejections have been made, the Office action
should clarify which rejections are being withdrawn.
Q. TODD DICKINSON
Acting Assistant Secretary of Commerce and
Acting Commissioner of Patents and Trademarks
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 rejected the claims separately based upon the Hunter
and Faulstich references. The PTO never applied the references in
combination. During reexamination, Portola Packaging amended the patent
claims, and for the first time the PTO 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 application which matured
into the patent that is being reexamined, any reissue application for
the patent, and any reexamination proceeding for the patent.
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 mark on a PTO 1449 form, or equivalent,
submitted with 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
pattems and evidence which suggest that the examiner 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 37 C.F.R. 1.104(c)(3).
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 relied upon or actually
discussed by the PTO does not create a substantial new question of
patentability.
15. For example, the examiner may not have believed that the reference
qualified as prior art because: (i) the reference was undated or was
believed to have a bad date; (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 declaration filed under
37 C.F.R. 1.131; 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 relied upon or discussed in a
prior PTO proceeding even though the title or the citation of the
reference may be different.