110 F.3d 786 (Fed. Cir. 1997), 96-1376, In re Portola Packaging

Docket Nº:96-1376.
Citation:110 F.3d 786
Party Name:42 U.S.P.Q.2d 1295 In re PORTOLA PACKAGING, INC.
Case Date:April 07, 1997
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

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110 F.3d 786 (Fed. Cir. 1997)

42 U.S.P.Q.2d 1295


No. 96-1376.

United States Court of Appeals, Federal Circuit

April 7, 1997

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Julian Caplan, San Francisco, California, argued for appellant. With him on the brief were C. Michael Zimmerman and Janet E. Muller.

Nancy J. Linck, Solicitor, Patent and Trademark Office, Arlington, Virginia, argued for appellee. With her on the brief were Albin F. Drost, Deputy Solicitor, and Kevin T. Kramer, Associate Solicitor.

Before MICHEL, LOURIE, and CLEVENGER, Circuit Judges.

LOURIE, Circuit Judge.

Portola Packaging, Inc. appeals from the decision of the Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences holding, after reexamination, that claims 1, 3-5, 7, and 8 of U.S. Patent 4,496,066 are unpatentable. In re Portola Packaging, Inc., No. 95-4121 (Bd. Pat.App. & Int. Feb. 16, 1996). Because the board exceeded its statutory authority by basing its decision solely on prior art previously considered by the PTO, we reverse.


On July 27, 1983, Joseph J. Bullock, III filed an application directed to a flexible bottle neck/cap combination. During the examination of that application, claims 1 and 2 were rejected under 35 U.S.C. § 102 (1994) as anticipated by, inter alia, U.S. Patent 3,204,799 to Hunter, and claims 3-6 and 8-11 were rejected under 35 U.S.C. § 103 (1994) as obvious based on, inter alia, the combined teachings of U.S. Patent 4,202,455 to Faulstich and two other references. In response to this rejection, Bullock amended the existing claims and added several new claims. Eight of these claims issued in the '066 patent, which was later assigned to Portola.

On October 27, 1993, a request to reexamine the '066 patent was filed by a third party, who purported to raise three substantial new questions of patentability: (1) whether claims 1, 3, 5, and 7 were anticipated by the Hunter patent; (2) whether those claims were anticipated by U.S. Patent 4,177,906 to Von Hagel; and (3) whether all of the claims of the '066 patent were rendered obvious by the combined teachings of the Faulstich patent and, inter alia, either the Hunter patent or the Von Hagel patent. The PTO granted the request. During reexamination, the examiner first rejected all of the claims as anticipated by, inter alia, the Von Hagel patent. In response, Portola canceled claims 2 and 6, and incorporated their subject matter into claims 1 and 5, respectively. The examiner subsequently rejected claims 1, 3-5, 7, and 8, inter alia, as obvious over the combined teachings of the Faulstich and Hunter patents. The board affirmed the examiner's rejection solely on that ground. Portola now appeals to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A) (1994) and 35 U.S.C. §§ 141, 306 (1994).


Portola argues that on reexamination the rejection based solely on the combined teachings of the Faulstich and Hunter patents was improper. Portola asserts that the reexamination statute, in light of its legislative history, does not permit rejections based solely on prior art that was before the PTO in an earlier examination. Accordingly, Portola does not dispute the statutory propriety of the initial bases for reexamination or the initial rejection on reexamination to the extent that it was based on the Von Hagel patent. However, Portola does contest the examiner's final rejection under § 103 and the board's decision affirming that rejection, neither of which relies on the Von Hagel patent. Portola requests that we reverse the board's decision and direct the PTO to issue a Certificate of Reexamination under 35 U.S.C. § 307(a) (1994), confirming the patentability of the amended claims.

In response, the Commissioner first argues that because the claims of the original application were never rejected under § 103 based on the specific combination of the Faulstich and Hunter patents, the rejection affirmed by the board is a new one that is permitted by the reexamination statute. The Commissioner notes the absence of evidence that the original examiner considered these two references in combination during the original application. Second, the Commissioner argues that because Portola amended

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the claims during reexamination, all of the post-amendment reexamination proceedings were authorized by the reexamination statute, and that those proceedings necessarily concerned questions of patentability that are distinct from those addressed during the original examination.

Whether the rejection based on the combined teachings of the Faulstich and Hunter patents was permissible under the reexamination statute raises an issue of statutory interpretation, a question of law which we review de novo, see In re Kathawala, 9 F.3d 942, 944, 28 USPQ2d 1785, 1786 (Fed.Cir.1993), without deference to the Commissioner's interpretation, see Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 1549-50, 38 USPQ2d 1347, 1351 (Fed.Cir.1996), cert. denied, --- U.S. ----, 117 S.Ct. 788, 789, 136 L.Ed.2d 730 (1997). The ultimate objective when interpreting a statute is to give effect to the intent of Congress. Thus, our duty is "to find that interpretation which can most fairly be said to be imbedded in the statute, in the sense of being most harmonious with its scheme and with the general purposes that Congress manifested."...

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