32646 Federal Register / Vol. 63, No. 114 / Monday, June 15, 1998 / Notices

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.

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

‘‘kevin.kramer@uspto.gov’’ or

‘‘john.whealan@uspto.gov’’.

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

‘‘john.whealan@uspto.gov’’ or

‘‘kevin.kramer@uspto.gov.’’

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 machinereadable 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
Federal Register / Vol. 63, No. 114 / Monday, June 15, 1998 / Notices 32647

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
32648 Federal Register / Vol. 63, No. 114 / Monday, June 15, 1998 / Notices

may determine whether a substantial new

question of patentability is raised by patents

and publication discovered by him . * * *’’);

see also MPEP § 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 § 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]

BILLING CODE 3510–16–P

DEPARTMENT OF EDUCATION

Submission for OMB Review;

Comment Request

AGENCY: Department of Education.

ACTION: Submission for OMB review;

comment request.

SUMMARY: The Acting Deputy Chief

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Information Officer, invites comments

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required by the Paperwork Reduction

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DATES: Interested persons are invited to

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1998.

ADDRESSES: Written comments should

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Attention: Danny Werfel, Desk Officer,

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