Issues of priority that could have been, but were not, considered during a patent's original examination, are not prohibited from being properly addressed during a reexamination.

During reexamination of an NTP patent related to wireless email technology, the PTO rejected all 764 claims as anticipated by a prior art patent.  The decision was appealed to the Board of Patent Appeals and Interferences (“the Board”) and affirmed.  Although the patent-in-suit claimed priority to a parent application that pre-dated the prior art patent, the Board concluded that NTP’s patent was not entitled to claim that priority.  NTP appealed to the Federal Circuit, which affirmed the Board’s decision.

On appeal, NTP agreed that the prior art would anticipate all the claims of the patent-in-suit if it could not maintain its claimed priority date.  However, it challenged the Board’s construction of the claim term “destination processor,” arguing that its own construction was proper and would allow priority to the parent application.  NTP further questioned whether the PTO and the Board properly considered priority during the patent’s reexamination.  The Federal Circuit reviewed the Board’s factual determinations for substantial evidence and evaluated all questions of law de novo. 

Considering NTP’s claim construction arguments, the Federal Circuit found that the Board’s construction of “destination processor” was legally correct and supported by the patent’s written description.  In contrast, NTP’s construction was not supported by the written description.  Under the Board’s correct construction, the patent claims were not supported by the written description of the claimed parent application.

The Federal Circuit next addressed whether it was appropriate to consider priority during a patent reexamination.  35 U.S.C. § 303(a) limits the scope of reexamination proceedings to “substantial new question[s] of patentability,” which are questions that have not been previously considered by the PTO.  These new considerations must be based only on “prior art consisting of patents or printed publications.”  The court held that these limitations did not bar a review of priority arguments that were not addressed during the original patent prosecution, even though they could have been considered.  Rejecting NTP’s argument that the original examiner must have considered its priority claim since he did not deny it, the court pointed to Congress’s 2002 amendment to section 303(a).  The 2002 amendment eliminated the presumption that an examiner must have considered all evidence before him—even though the MPEP requires that he consider whether the parent application’s written description supports the claims of the patent.  Because it was undisputed that the examiner did not examine the parent application and its written description, the Federal Circuit found that the issue of priority was not considered during the original examination, and thus was properly addressed during the reexamination.

A copy of the opinion can be found here.