[Federal Register Volume 64, Number 61 (Wednesday, March 31, 1999)]
[Notices]
[Pages 15346-15350]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 99-7786]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. 990212048-9048-01]
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
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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 March 31, 1999.
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''.
SUPPLEMENTARY 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 FR 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 art 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
[[Page 15347]]
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
[[Page 15348]]
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
[[Page 15349]]
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.
Dated: March 23, 1999.
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 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 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 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 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 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 to
determine 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 CFR 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 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 relied upon or
actually discussed by the PTO does not
[[Page 15350]]
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 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 declaration filed
under 37 CFR 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.
[FR Doc. 99-7786 Filed 3-30-99; 8:45 am]
BILLING CODE 3510-16-P
