The proper course of action to seek reconsideration of prior art considered not to raise a substantial new question of patentability for reexamination is to petition the Director to review that determination pursuant to 37 C.F.C. § 1.927, even if reexamination is ultimately accepted on other grounds. This issue is not appealable after the fact. It is worth noting that the MPEP (§ 2648) is in fact wrong (or at least confusing) in this regard. The court tried to distinguish the MPEP’s statement that “all prior art” will be considered during the reexamination once accepted from the facts in this case, but ultimately had to fall back on the principle that “the MPEP does not have the force of law.”
Background / Facts: Belkin filed a request for inter partes reexamination of a competitor’s patent directed to wireless router technology. The request alleged ten substantial new questions of patentability based on four prior art references. The PTO determined that the first three references did not raise a substantial new question of patentability, but that the issue of anticipation by the fourth reference did raise such a question. Following an Action Closing Prosecution (“ACP”) in the reexamination addressing only the anticipation question raised by the fourth reference, Belkin appealed to the Board, challenging the examiner’s failure to make obviousness rejections involving the three other references once the anticipation assertion had failed.
Issue(s): Whether the Board has jurisdiction to consider on reconsideration prior art found not to raise a substantial new question of patentability when reexamination is subsequently granted for the same claim on another reference.
Holding(s): No. It is true that the PTO may raise substantial new questions of patentability on its own initiative once reexamination has commenced, beyond the substantial new question accepted from the requester, but that decision is not appealable. 35 U.S.C. § 312(c) bars the Board from considering prior art not found to raise a substantial new question of patentability even though a substantial new question of patentability was found with regard to another reference. Accordingly, an issue that has been determined not to raise a substantial new question of patentability with respect to certain other prior art cannot later be considered by the examiner and ultimately the Board. Instead, if a requester disagrees with the determination that no substantial new question of patentability with respect to certain prior art has been raised, 37 C.F.R. § 1.927 permits the requester only to file a petition to the Director for review of that decision.