83 F.3d 1394 (Fed. Cir. 1996), 95-1337, In re Recreative Technologies Corp.

Docket Nº:95-1337.
Citation:83 F.3d 1394
Case Date:May 13, 1996
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

Page 1394

83 F.3d 1394 (Fed. Cir. 1996)

38 U.S.P.Q.2d 1776


No. 95-1337.

United States Court of Appeals, Federal Circuit

May 13, 1996

Page 1395

Timothy J. Martin, Timothy J. Martin, P.C., Lakewood, Colorado, argued for appellant.

James T. Carmichael, Office of the Solicitor, Arlington, Virginia, argued for appellee. Nancy J. Linck, Solicitor, Albin F. Drost, Deputy Solicitor and Murriel E. Crawford, Associate Solicitor, Office of Solicitor, Arlington, Virginia, were on the brief, for appellee.

James A. Lowe and Sandeep Seth, Denver, Colorado, were on the brief, for Amicus Curiae, Preferred Response Marketing, Ltd.

Before ARCHER, Chief Judge, and RICH and NEWMAN, Circuit Judges.

PAULINE NEWMAN, Circuit Judge.

Recreative Technologies Corp. ("Recreative") appeals the decision of the Patent and Trademark Office ("PTO") Board of Patent Appeals and Interferences holding claims 1, 2, and 4 of United States Patent No. 4,912,800 ("the '800 patent"), upon reexamination, to be unpatentable. 1 We conclude that the Board exceeded the statutory authorization that governs reexamination. We reverse the decision of the Board, and remand for further proceedings consistent with this opinion.


The '800 patent is directed to a cleaning device for use by golfers. The device is structured to be secured to a golf bag for use to clean items such as golf clubs, balls, and shoes. The cleaning device is comprised of several elements including a water absorbent towel body, a brush member secured to the towel body and a mounting means to releasably mount the towel body/brush to a golf bag. After Recreative sued Preferred Response Marketing ("Preferred") for infringement, Preferred requested reexamination of the '800 patent, citing as new references five patents and three publications, and stating that these new references raised a substantial new question of patentability. The PTO granted the request for reexamination.

On reexamination the examiner rejected claims 1, 2, 4-7, and 17 as unpatentable on the ground of obviousness, 35 U.S.C. § 103, in view of a reference to Ota. The examiner did not reject any claim on any of the eight new references cited by Preferred, and did not cite any reference other than Ota. The examiner confirmed original claims 13-16 and 18-20 and held patentable original claims 3 and 8-12. The Ota reference had been cited in the original examination on the same ground, obviousness, and the claims had been held patentable over Ota.

Page 1396

Recreative appealed the reexamination rejection to the Board. The Board reversed the examiner's rejection of claims 1, 2, 4-7, and 17, holding that the claims were not obvious in view of Ota. However, the Board sua sponte rejected claims 1, 2, and 4 based on the same Ota reference, but now under 35 U.S.C. § 102, for lack of novelty. This appeal followed.


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...

To continue reading