While rejections of original patent claims are limited to prior art grounds during reexamination, newly added claims may be rejected for failing to comply with § 112. Here, for example, the rejection of certain claims as being indefinite under 35 U.S.C. § 112, second paragraph, was found to be proper because those claims were not original claims but were newly added during the course of reexamination. “When new claims are added during reexamination, … the new claims may be rejected for failing to comply with § 112.” This case serves as a reminder that only original patent claims are exempt from rejection under 35 U.S.C. § 112 during reexamination.
Background / Facts: The patent on appeal here from reexamination proceedings at the PTO is directed to an “Electronic Bookstore Vending Machine” for printing and binding books on demand. During the course of reexamination, the patentee added over one hundred new claims. The examiner issued a final rejection, maintaining the original § 102(b) and § 103(a) rejections and entering new rejections for many of the new claims for deficiencies under § 112.
Issue(s): Whether the rejection of certain newly-added claims as indefinite under § 112 is improper for failing to be limited to only prior-art grounds.
Holding(s): No. “[The patentee] is correct that rejections of original patent claims are limited to prior art grounds during reexamination. When new claims are added during reexamination, however, the new claims may be rejected for failing to comply with § 112. [] Because the only claims rejected for failure to comply with § 112 were new claims added by [the patentee] during the course of reexamination, the Board did not err in affirming the examiner’s § 112 rejections.”