United States Patent and Trademark Office OG Notices: 01 July 2003
Revised Guidelines for Usage of
Previously Cited/Considered Prior Art
In Reexamination Proceedings
The present notice sets forth reexamination policy and practice
now in effect as a result of the revision of the reexamination statute
made by Section 13105, part (a), of the Patent and Trademark Office
Authorization Act of 2002 (H.R. 2215) (Pub. L. 107-273 (2002))
(hereinafter referred to as the "Act of 2002").1
In the decision of In re Portola Packaging Inc., 110 F.3d
786, 42 USPQ2d 1295 (Fed. Cir. 1997), prior art was essentially
precluded from being applied as the sole basis for providing
a substantial new question of patentability (SNQ) in a reexamination
proceeding if the art was: (1) relied upon to reject any claim in an
earlier examination of the patent; or (2) cited in an earlier
examination and its relevance to the patentability of any claim was
discussed in that examination. Such art will be referred to as "old
art" throughout the present Notice.2
The Act of 2002 revised the reexamination statute by adding, inter alia,
the following new last sentence of 35 U.S.C. 303(a) and 312(a):
"The existence of a substantial new question of patentability is
not precluded by the fact that a patent or printed
publication was previously cited by or to the Office or considered
by the Office."3,4
This revision made by the Act of 2002, in effect, overruled the
Portola Packaging decision.5
The effective date of this revision is stated in the Act of
2002 as follows:
"The amendments made by this section shall apply with
respect to any determination of the Director of the United
States Patent and Trademark Office that is made under section
303(a) or 312(a) of title 35, United States Code, on or after
the date of enactment of this Act." [Emphasis added in bold]
Accordingly, for any reexamination ordered on or after November
2, 2002 (the effective date of the statutory revision), the Office is
hereby repealing the Guidelines for Reexamination of Cases in
View of In re Portola Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295
(Fed. Cir. 1997), 64 Fed. Reg. 15346 (Mar. 31, 1999),
1223 Off. Gaz. Pat. Office 124 (June 22, 1999) (notice),
which were promulgated in order to conform with the decision of
In re Portola Packaging Inc., supra.
Thus, in any reexamination ordered on or after November 2,
2002, reliance on old art does not necessarily preclude the existence
of a SNQ that is based exclusively on that old art. Determinations on
whether a SNQ exists in such an instance shall be based upon a
fact-specific inquiry done on a case-by-case basis. For example, a SNQ
may be based solely on old art where the old art is being
presented/viewed in a new light, or in a different way, as
compared with its use in the earlier concluded examination(s), in view
of a material new argument or interpretation presented in the request.
FOR FURTHER INFORMATION CONTACT: Kenneth M. Schor or Gerald A.
Dost, Senior Legal Advisors in the Office of Patent Legal
Administration. Kenneth M. Schor may be contacted by telephone at (703)
308-6710 or by e-mail addressed to KENNETH.SCHOR@USPTO.GOV. Gerald A.
Dost may be contacted by telephone at (703) 305-8610; or by e-mail
addressed to GERALD.DOST@USPTO.GOV.
STEPHEN G. KUNIN
Deputy Commissioner for
Patent Examination Policy
1 H.R. 2215 was enacted in Public Law 107-273, 21st
Century Department of Justice Appropriations Authorization Act, 116
Stat. 1758 (2002).
2 This term "old art" was coined in the decision
of In re Hinker Co., 150 F.3d 1362, 1365-66, 47 USPQ2d 1523,
1526 (Fed. Cir. 1998) where the Court stated "[w]e extended that
holding in In re Portola Packaging . . . which 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'". [Emphasis added]
3 See the 21st Century Department of Justice
Appropriations Authorization Act, TITLT III-INTELLECTUAL PROPERTY,
Subtitle A-Patent and Trademark Office, Section 13105, part
(a), of the "Patent and Trademark Office Authorization Act" of
2002-Enacted as part of Public Law 107-273 on November 2, 2002.
4 The amended subsections of 303(a) and 313(a) now read as follows
(new sentence in italics):
35 U.S.C. 303 Determination of issue by Director.
(a) Within three months following the filing of a request for
reexamination under the provisions of section 302 of this title, the
Director will determine whether a substantial new question of
patentability affecting any claim of the patent concerned is raised by
the request, with or without consideration of other patents or printed
publications. On his own initiative, and any time, the Director may
determine whether a substantial new question of patentability is raised
by patents and publications discovered by him or cited under the
provisions of section 301 of this title. The existence of a
substantial new question of patentability is not precluded by the fact
that a patent or printed publication was previously cited by or to the
Office or considered by the Office.
35 U.S.C. 312 Determination of issue by Director
(a) REEXAMINATION.- Not later than 3 months after the filing of a
request for inter partes reexamination under section 311, the Director
shall determine whether a substantial new question of patentability
affecting any claim of the patent concerned is raised by the request,
with or without consideration of other patents or printed publications.
The existence of a substantial new question of patentability is
not precluded by the fact that a patent or printed publication was
previously cited by or to the Office or considered by the Office.
5 While the legislative history for H.R. 2215 is
silent as to this point, the legislative history for the precursor bill
H.R. 1866 clearly does make the point. In H.R. 1866, the same sentence
(as in H.R. 2215) was added to 35 U.S.C. 303(a) and 312(a), and the
legislative history explicitly stated the purpose of this addition was
to overrule the Portola Packaging decision. See, for
example, page 2 of H.R. 1866, House Judiciary Committee Report Number
107-120 (June 28, 2001). See also In re Robert T. Bass, 314
F.3d 575, 576-77, 65 USPQ2d 1156, 1157 (Fed. Cir. 2002), where the
Court stated in the sole footnote:
"On November 2, 2002, 35 USC 303(a) was amended by the passage of
Pub. L. No. 107-273, 13105, (116 Stat.) 1758, 1900, to add
"[t]he existence of a substantial new question of patentability is
not precluded by the fact that a patent or printed publication was
previously cited by or to the Office or considered by the Office,"
thereby overruling Portola Packaging."
6 See the 21st Century Department of Justice
Appropriations Authorization Act, TITLE III-INTELLECTUAL PROPERTY,
Subtitle A-Patent and Trademark Office, Section 13105, part
(b), of the "Patent and Trademark Office Authorization Act of
2002" - Enacted as part of Public Law 107-273 on November 2, 2002.