[Federal Register Volume 63, Number 114 (Monday, June 15, 1998)]
[Notices]
[Pages 32646-32648]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 98-15778]



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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 ``[email protected]'' or ``[email protected]''.

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 ``[email protected]'' or 
``[email protected].''

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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