Note bold and underlined at end. Opty

<The Reexamination Statute

Recreative states that the PTO had no authority to reject the claims, on reexamination, on the same ground on which the application was examined and the claims allowed during the original prosecution. Recreative states that the reexamination statute limits reexamination to "a substantial new question of patentability," and does not authorize repetition of a rejection on the same grounds that had been resolved in favor of the applicant during the original examination. 35 U.S.C. §303 requires the examiner to determine whether a "substantial new question of patentability" is raised by the reexamination request. Only if a new question of patentability is raised, can the patent be reexamined.

Recreative states that the examiner merely repeated the same rejection for obviousness, based on the same Ota reference, as during the initial examination. Recreative states that it had successfully traversed the rejection based on the Ota reference in the initial examination, and that the reexamination statute was written to limit reexamination to new questions.

The Commissioner argues that "[o]nce initiated, the scope of reexamination includes reexamination of the patent in view of any pertinent patents and printed publications," new or old. The Commissioner thus contends that the repeat examination on the same ground was proper practice. However, the reexamination statute was designed to exclude repeat examination on grounds that had already been successfully traversed. Thus, the statute, on its face, does not accommodate the Commissioner's position.

The statute authorizes reexamination only when there is a substantial new question of patentability. A second examination, on the identical ground that had been previously raised and overcome, is barred. Thus, once it becomes apparent that there is no new question of patentability, it is improper to conduct reexamination on an old question that had been finally resolved during the initial examination. The Commissioner's argument that a different interpretation should prevail, and that the PTO has authority to reach a different result on reexamination on the identical ground, has led us to review the considerations that underlay the statute at the time of enactment.>