Only Prior Art from a Completed Proceeding Is Prohibited from Being Relied Upon in Subsequent Reexams

Article by Kenneth Cage and Lawrence T. Cullen

The U.S. Court of Appeals for the Federal Circuit, in affirming a rejection by the U.S. Patent and Trademark Office (PTO) Board of Appeals and Interferences, clarified that for any reexamination proceeding declared prior to enactment of the amended reexamination statute (November 2, 2002), only prior art from a prior completed reexamination proceeding is prohibited from being relied upon to establish a "substantial new question of patentability" in the subsequent reexamination proceeding. In re Bass, Case No. 02-1046 (Fed. Cir. Dec. 17, 2002).

A third party requested reexamination of U.S. Pat. No. 4,473,026 owned by Bass (the `026 patent). During the reexamination, the examiner found the patent to be allowable over the cited prior art. Before the PTO issued a reexamination certificate, the third party submitted a second reexamination request citing the same prior art. The PTO granted the second request and subsequently rejected the claims, using the twice-cited prior art. The Board affirmed the examiner’s rejection and Bass appealed.

Relying on In re Portola Packaging and MPEP §2242(A)(2), Bass argued that the PTO could not consider the prior art references considered in the first reexamination either in granting the second reexamination request or in determining the validity of the claims. In Portola Packaging, the Federal Court determined that prior art from a prior proceeding could not be relied on to raise the statutorily required "substantial new question of patentability" in a later reexamination. The Federal Circuit explained, however, that until a reexamination proceeding has been completed, the PTO may reconsider an earlier action and a proceeding is only complete upon the issuance of the statutorily mandated reexamination certificate. The Federal Circuit held that because the prior art had not been considered in a prior completed reexamination proceeding, Portola Packaging did not apply and the PTO was free to reconsider the same prior art.

Practice Note: The decision in Bass comes on the heels of amendments to the reexamination statute, 35 U.S.C. §§303(a) and 312(a), which effectively overrule In re Portola Packaging for any reexamination declared after November 2, 2002, by codifying that "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." Thus, the holding in Bass only applies to reexaminations that were declared prior to November 2, 2002.