SAME REFERENCE CAN CREATE A SUBSTANTIAL NEW QUESTION OF PATENTABILITY

In Re Swanson, [2007-1534] (Reexamination No. 90/006,785)] (September 4, 2008) [GAJARSA, Lourie, Bryson] The Federal Circuit affirmed that the claims 22-25 of U.S. Patent No. 5,073,484 were anticipated and would have been obvious.
DISCUSSION: After losing a case on the invalidity and infringement of the ‘484 patent, Sytron initiated a reexamination in the PTO asserting a substantial new question of patentability. Claims were rejected over Deutsch, and the BPAI affirmed, dismissing Swanson’s argument that Deutsch could not raise a substantial new question of patentability because a jury had affirmed a finding of validity over the reference and the Federal Circuit had affirmed. The Federal Circuit explained that the “substantial new question of patentability” requirement prevents potential harassment of patentees by acting to bar reconsideration of any argument already decided by the PTO. However the statute now expressly states that the existence of 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.
The Federal Circuit found that Section 303’s language and legislative history, as well as the differences between litigation and examination (in particular the presumption of validity) led it to conclude that Congress did not intend a prior court judgment upholding the validity of a claim to prevent the PTO from finding a substantial new question of validity regarding an issue that has never been considered by the PTO. In light of the extremely limited purpose for which the examiner considered Deutsch in the initial examination, the Board is correct that the issue of whether Deutsch anticipates the method disclosed in claims 22, 23, and 25 was a substantial new question of patentability, never before addressed by the PTO.