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2247.01 Examples of Decisions on Request for Reexamination [R-2] - 2200 Citation of Prior Art and Ex Parte Reexamination of Patents

2247.01 Examples of Decisions on Request for Reexamination [R-2]

Examples of decisions on requests >for ex parte reexamination< are provided below.

DECISION

A substantial new question of patentability affecting Claims 1 - 3 of United States Patent Number 9,999,999 to Key is raised by the request for reexamination. Extensions of time under 37 CFR 1.136(a) will not be permitted in these proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant" and not to parties in a reexamination proceeding. Additionally, Office policy requires that reexamination proceedings "will be conducted with special dispatch" (37 CFR 1.550 (a)) and provides for extensions of time in reexamination proceedings as set forth in 37 CFR 1.550 (c). > The patent owner is reminded of the continuing responsibility under 37 CFR 1.565(a), to apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving Patent No. 9,999,999 throughout the course of this reexamination proceeding. < The request indicates that Requester considers that Claims 1 - 3 are unpatentable over Smith taken with Jones. The request further indicates that Requester considers that Claim 4 is unpatentable over the Horn publication. It is agreed that the consideration of Smith raises a substantial new question of patentability as to Claims 1 - 3 of the Key patent. As pointed out on pages 2 - 3 of the request, Smith teaches using an extruder supported on springs at a 30 degree angle to the horizontal but does not teach the specific polymer of Claims 1 - 3 which is extruded. The teaching as to spring-supporting the extruder at 30 degrees was not present in the prosecution of the application which became the Key patent. Further, there is a substantial likelihood that a reasonable examiner would consider this teaching important in deciding whether or not the claim is patentable. Accordingly, Smith raises a substantial new question of patentability as to Claims 1 - 3, which question has not been decided in a previous examination of the Key patent. The Horn publication does not raise a new question of patentability as to Claim 4 because its teaching as to the extrusion die is a substantial equivalent of the teaching of the die by the Dorn patent which was considered in the prosecution of the application which became the Key patent. However, Claim 4 will be reexamined along with Claims 1 - 3 of the Key patent.

Kenneth M. SchorPrimary Examiner, Technology Center * > 3700 <

Example (1): Decision Granting Request for Reexamination [Page 2 of 2]

DECISION

No substantial new question of patentability is raised by the request for reexamination and prior art cited therein for the reasons set forth below. The request indicates that Requester considers that Claims 1 - 2 are unpatentable over Smith taken with Jones. The request further indicates that Requester considers that Claim 3 is unpatentable over Smith taken with Jones and when further taken with the Horn publication. The claims of the Key patent, for which reexamination is requested, require that an extruder be supported on springs at an angle of 30 degrees to the horizontal, while a specific chlorinated polymer is extruded through a specific extrusion die. The Smith patent does not raise a substantial new question of patentability as to the Key claims. Smith's teaching as to the extruder being spring-supported at 30 degrees is a substantial equivalent of the teaching of same by the Dorn patent which was considered in the prosecution of the application which became the Key patent. In the request for reexamination, it is argued that Jones teaches the extrusion die. However, Jones was also used in the prosecution of the Key application to teach the extrusion die. The request argued that the Horn publication shows the connection of the support means to the extruder via bolts, as recited in Claim 3 of the Key patent. Although this teaching was not provided in the prosecution of the Key application, the teaching would not be considered to be important to a reasonable examiner in deciding whether or not the Key claims are patentable. The use of a bolt instead of a screw (which was taught by the art of record in the Key application) to provide the connection has not been shown in the request to be important in the context of attaching the support means to the extruder. The references set forth in the request have been considered both alone and in combination. They fail to raise a substantial new question of patentability as to any one of the Key patent claims. Accordingly, the request for reexamination is DENIED.

Kenneth M. SchorPrimary Examiner, Technology Center * > 3700 <

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