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Combined Reexam Proceedings Leads to Rejection of Claims

December 17, 2002

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Last Month at the Federal Circuit - January 2003

Judges: Mayer (author), Clevenger, and Rader

In In re Bass, No. 02-1046 (Fed. Cir. Dec. 17, 2002), Robert T. Bass owns U.S. Patent No. 4,473,026 (“the ‘026 patent”) directed to a fishing boat. In 1996, a third party requested a reexamination of the ‘026 patent based on a prior art design patent to William Cargile, several Cargile brochures, and a National Fisherman publication (“Lucander”). Shortly thereafter, the same third party requested a second reexamination based on several other references. The Examiner merged the two reexamination proceedings and rejected the claims. The Board affirmed the rejection and Bass appealed.

On appeal, Bass contended that in the first reexamination proceeding, the Examiner had indicated allowance before receiving the second request for reexamination. Therefore, the PTO had erred in considering the Cargile and Lucander prior art in the second reexamination proceeding because it did not present a substantial new question of patentability.

The Federal Circuit rejected this argument, explaining that until a PTO matter is completed, including the first reexamination proceeding in this case, the PTO may reconsider any earlier action. Because, in this case, the PTO had not reviewed the Lucander and Cargile references in a prior proceeding, the PTO was free to reconsider and ultimately base a rejection upon them.