PATENT RE-EXAMINATION
In contrast, if the prior art cited during re-examination raises an SNQ, the PTO will consider it even if previously considered. Indeed, 35 U.S.C. § 303 makes clear that “[t]he existence of an [SNQ] 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”.
Raising an SNQ
An SNQ requires a specific showing that a prior art reference teaches something new concerning a claim that was not considered during an earlier examination (see the PTO’s Manual of Patent Examining Procedure (MPEP) for the full definition of an SNQ). Before ordering a re-examination, an examiner must first resolve the threshold issue of whether an SNQ exists in the request. Terefore, the more clearly and expressly a new technological teaching is presented, the more likely a re-examination request will be ordered.
Previously considered prior art may, by itself, be used to present an SNQ if the request presents the prior art in “a new light or a different way that escaped review during earlier examination”, (MPEP). An SNQ can also be found if the previously considered art is seen in a “new light”
or a “different way” than an earlier examination. Te request should demonstrate to the examiner that the prior art is important in deciding whether the claim is patentable. In short, key considerations to obtaining an SNQ include presenting the art in a new light or different way and showing how the art is important while avoiding cumulative prior art.
Previously considered prior art can also be combined with other art not previously considered to present a ‘new’ obviousness- based rejection. While this approach satisfies the new prong of the SNQ, care should be taken that the combination is also non-cumulative. Terefore, the never considered prior art should also disclose what was previously found to be allowable subject matter. For example, if it was determined during prosecution that the prior art did not teach element C of elements A, B and C, then combining the previously used prior art with a reference teaching element C is likely to present an SNQ for that claim.
Tere are also ways to use previously considered prior art without combining the art with another reference. One way is to find relevant passages in the reference that are material to the claims at
issue, but were not previously discussed on the record. Another possible option is to present the old art with new evidence, such as an expert declaration or patent owner admission that provides a new and different understanding of the reference compared with a previous examination. Te different passages or evidence should not simply restate information that was previously considered. An examiner will oſten rely upon this requirement when making a determination of whether an SNQ is present.
Aſter overcoming these hurdles, the requester must provide an explanation about how the prior art was previously considered to provide a point of reference to the examiner. Specifically, the requester should summarise the previous arguments and explain how the new technological teaching would have affected the previous examiner’s final determinations. Te explanation need not describe why the previous determinations made by the PTO were incorrect. Instead, the discussion should focus on how the new technological teaching would have led the examiner to the correct conclusion.
Having addressed how to present an SNQ using previously considered prior art in a
34 World Intellectual Property Review September/October 2010
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