The substantial new question of patentability requirement to institute reexamination proceedings does not extend to claims added after commencement of the reexamination. Here, for example, newly added claims during reexamination were found to be exempt from the additional protections provided by the substantial new question of patentability requirement because that requirement only extends to the request for reexamination. “[N]either § 2617 nor § 2666.05 explicitly or implicitly directs an examiner to determine whether a proposed rejection presents a substantial new question of patentability with respect to a new or amended claim.” This would be a good case to consult and cite in response to a denial of due consideration for proposed rejections during an inter partes reexamination of claims added during the reexamination proceedings.
Background / Facts: The patent on appeal here from inter partes reexamination proceedings at the PTO is directed to using hypoxic compositions for preventing and extinguishing fires. During reexamination, the patentee added new claims, in response to which the third party requester proposed several rejections. The PTO, however, found that the proposed rejections of the newly added claims did not present a substantial new question of patentability and refused to consider the merits of the proposed rejections in detail.
Issue(s): Whether the determination of a substantial new question of patentability is relevant to new claims proposed by a patentee during the course of an inter partes reexamination.
Holding(s): No. “[T]he provision requiring a determination of a substantial new question of patentability was not applicable to the case once the Director already had ordered reexamination on the ground that other prior art raised a substantial new question of patentability. We therefore agree with [the third party requester] that the Board erred in dismissing the cross-appeal for lack of jurisdiction because the Examiner incorrectly refused to consider proposed rejections to newly-added claims after reexamination had been instituted.”