Search Notes
`
`Applicationlcontr I No.
`
`Applicant(s)lPatent under
`Reexamination
`
`.
`
`90/007,402
`
`5191573
`
`-
`
`Roland G. Foster
`
`3992
`
`2
`SEARCHED
`
`SEARCH NOTES
`(INCLUDING SEARCH STRATEGY)
`
`Notupdated
`
`3/8/2007
`
`U.S. Patent and Trademark Office
`
`Part of Paper No. 20070222
`
`Page 00851
`
`

`
`Litigation Search Report CRU 3999
`
`TO: James Menefee
`Location: CRU
`
`From: Patricia Volpe
`Location: CRU 3999
`
`Art Unit: 3992
`Date: 04/23/07
`Case Serial Number: 90/007,482
`'
`
`_ MDW 7C69
`Phone: (571) 272-6825
`
`Patricia.vo|pe@uspto.gov
`
`Search Notes
`
`Litigation was not found involving U.S. Patent Number 6,486,982
`
`Sources:
`
`1) I performed a KeyCite Search in Westlaw, which retrieves all history on the patent including any
`litigation.
`
`2) I performeda search on the patent in Lexis CourtLink for any open dockets or closed cases.
`
`3) I performed a search in Lexis in the Federal Courts and Administrative Materials databases for any cases
`found.
`'
`
`4) I performed a search in Lexis in the IP Journal and Periodicals database for any articles on the patent.
`
`5) I performed a search in Lexis in the news databases for any articles about the patent or any articles about
`litigation on this patent.
`
`Page 00852
`
`

`
`Page 2 of 3
`
`Date of Printing: APR 23,2007
`
`KEYCITE
`
`CUS PAT 6486982 SYSTEM FOR MAKING A HOLOGRAM OF AN IMAGE BY MANIPULATING
`OBJECT BEAM CHARACTERISTICS TO REFLECT IMAGE DATA, Assignee: Illinois Tool Works Inc.
`(Nov 26, 2002)
`
`History
`SYSTEM FOR MAKING A HOLOGRAM OF AN IMAGE BY MANIPULATING OBJECT
`BEAM CHARACTERISTICS TO REFLECT IMAGE DATA, US PAT 6486982, 2002 WL
`31660457 (U.S. PTO Utility Nov 26, 2002) (NO. 09/168585)
`
`Patent Family
`MFG. HOLOGRAM, E.G. FOR IDENTITY CARD OR CREDIT CARD - MODULATING AND
`ANGLING OBJECT BEAMS DERIVED FROM AND INTERSECTING WITH REFERENCE
`LASER BEAM AT SCANNED SURFACE ACCORDING TO PIXEL DATA, DWPL
`1995-179003
`
`Assignments
`ACTION: ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR
`DETAILS).
`NUMBER OF PAGES: 002, DATE RECORDED: May 06, 2003
`ACTION: ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR
`DETAILS).
`NUMBER OF PAGES: 003, DATE RECORDED: Jun 18, 2002
`ACTION: ASSIGNMENT OF ASSIGNORSINTEREST (SEE DOCUMENT FOR
`DETAILS).
`NUMBER OF PAGES: 004, DATE RECORDED: Oct 08, 1998
`
`Patent Status Files
`. Request for Re-Examination, (OG date: May 17, 2005)
`
`Prior Art
`US PAT 4878717 APPARATUS AND METHOD FOR RAPIDLY CONSTRUCTING
`
`HOLOGRAMS, Assignee: Brown University Research Foundation, HIS. PTO Utility 1989)
`US PAT 4778262 COMPUTER AIDED HOLOGRAPHY AND HOLOGRAPHIC COMPUTER
`GRAPHICS, Assignee: American Bank Note Holographics, 1nc., (U .S. PTO Utility 1988)
`US PAT 5138471 HOLOCOMPOSER, (U.S. PTO Utility 1992)
`US PAT 4498740 HOLOGRAM WRITER AND METHOD, Assignee: Aerodyne, Research, Inc.,
`(US. PTO Utility 1985)
`US PAT 5262879 HOLOGRAPHIC IMAGE CONVERSION METHOD FOR MAKING A
`CONTROLLED HOLOGRAPHIC GRATING, Assignee: Dimensional Arts. Inc., (U.S. PTO
`Utility 1993)
`US PAT 3560071 HOLOGRAPHIC RECORDING AND VISUAL DISPLAY SYSTEMS,
`Assignee: Everett A Johnson;; Silvennan Daniel, (U.S. PTO Utility 1971)
`US PAT 4212536 HOLOGRAPHIC SUBTRACTION WITH PHASE MODULATION TO
`
`DISTINGUISH PHASE AND AMPLITUDE DIFFERENCES, Assignee: Magyar Tudomanyos
`Akademia Kozponti, (U.S. PTO Utility 1980)
`US PAT 4498729 METHOD AND APPARATUS FOR MAKING ACHROMATIC
`
`HOLOGRAMS, Assignee: Polaroid Corporation, (U.S. PTO Utility 1985)
`
`© Copyright 2007 West, Carswell, Sweet & Maxwell Asia and Thomson Legal & Regulatory Limited, ABN 64
`058 914 668, or their Licensors. All rights reserved.
`
`http://web2.westlaw.com/print/printstream.aspx?prft=HTMLE&destination=atp&sv= SpIit&r. ..
`
`4/23/O7
`
`Page 00853
`
`

`
`Page 3 of 3
`
`US PAT 5119214 METHOD FOR FORMING A COMPUTER GENERATED HOLOGRAM,
`Assignee: Matsushita Electric Industrial Co., Ltd., (U.S. PTO Utility 1992)
`US PAT 5058992 METHOD FOR PRODUCING A DISPLAY WITH A DIFFRACTION
`GRATING PATTERN AND A DISPLAY PRODUCED BY THE METHOD, Assignee: Toppan
`Printing Co., Ltd., (U.S. PTO Utility 1991)
`US PAT 3615123 MULTIPLE EXPOSURE HOLOGRAPHIC SYSTEM, Assignee: Trw Inc.,
`(U.S. PTO Utility 1971)
`US PAT 4655542 OPTICAL SIGNAL PROCESSING ARRANGEMENTS, Assignee:
`International Business Machines, (U.S. PTO Utility 1987)
`US PAT 4111519 RECORDING AND READING SYNTHETIC HOLOGRAMS, Assignee: Harris
`Corporation, (U.S. PTO Utility 1978)
`US PAT 3746783 SHUTFERLESS PLAYBACK DEVICE FOR HOLOGRAPHIC MOTION
`
`PICTURE RECORD PRESSINGS, Assignee: Rca Corporation, (U.S. PTO Utility 1973)
`US PAT 4017158 SPATIAL FREQUENCY CARRIER AND PROCESS OF PREPARING SAME,
`Assignee: E. I. Du Pont de Nemours and Company, (U.S. PTO Utility 1977)
`US PAT 3832027 SYNTHETIC HOLOGRAM GENERATION FROM A PLURALITY OF
`
`TWO-DIMENSIONAL VIEWS, Assignee: At&t Corp., (U .S. PTO Utility 1974)
`US PAT 5822092 SYSTEM FOR MAKING A HOLOGRAM OF AN IMAGE BY
`MANIPULATING OBJECT BEAM CHARACTERISTICS TO REFLECT IMAGE DATA, (U.S.
`PTO Utility 1998)
`'
`
`© Copyright 2007 West, Carswell, Sweet & Maxwell Asia and Thomson Legal & Regulatory Limited, ABN 64
`058 914 668, or their Licensors. All rights reserved.
`
`http://web2.westlaw.corn/print/printstream.aspx?prft=HTMLE&destination=atp&sv=Split&r. ..
`
`4/23/07
`
`Page 00854
`
`

`
`LexisNexis CourtLink - Patent Search - Searching
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`
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`

`
`Search - 1 Result - patno=6486982
`
`Source: Command Searching > Utility, Design and Plant Patents E]
`Terms: patno=6486982 (Edit Search | Suggest Terms for My Search)
`
`168585 (09) 6486982 November 26, 2002
`
`UNITED STATES PATENT AND TRADEMARK OFFICE GRANTED PATENT
`
`6486982
`
`0 Get Drawing Sheet 1 of 8
`Access PDF of Official Patent *
`
`Check for Patent Family Report PDF availability *
`* Note: A transactional charge will be Incurred for downloading an
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`
`‘ Order Patent File History / Wrapper from REEDFAX®
`Link to Claims Section
`
`November 26, 20028
`
`System for making a hologram of an image by manipulating object beam characteristics to
`reflect image data
`
`REEXAM-LITIGATE: March 28, 2005 - Reexamination requested March 28, 2005 by Martin P.
`Hoffman, Hoffman, Wasson & Gitler, PC, Arlington, VA, Reexamination No. 90/007,482 (O.G.
`May 17, 2005) Ex. Gp.: 2872
`
`APPL-NO: 168585 (09)
`
`FILED-DATE: October 8, 1998
`
`GRANTED-DATE: November 26, 2002
`
`ASSIGNEE-PRE-ISSUE: October 8, 1998 - ASSIGNMENT OF ASSIGNORS INTEREST (SEE
`DOCUMENT FOR DETAILS)., DIMENSIONAL ARTS, INC. 15730 WEST HARDY ROADHOUSTON,
`TEXAS, 77060, Reel and Frame Number: 009511/0418
`June 18, 2002 - ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS).,
`ILLINOIS TOOL WORKS INC 3600 WEST LAKE AVENUEGLENVIEW, ILLINOIS, 60025, Reel and
`Frame Number: 013011/0028
`
`ASSIGNEE-AT-ISSUE: Illinois Tool Works Inc., Glenview, Illinois, United States (US), United
`States company or corporation (02)
`
`ASSIGNEE-AFTER-ISSUE: May 6, 2003 - ASSIGNMENT OF ASSIGNORS INTEREST (SEE
`DOCUMENT FOR DETAILS)., ILLINOIS TOOL WORKS INC. 3600 WEST LAKE
`AVENUEGLENVIEW, ILLINOIS, 60025, Reel and Frame Number: 013630/0863
`
`CORE TERMS: beam, pixel, hologram, grating, laser, splitter, holographic, lens,
`photosensitive, diffraction
`
`Souroe: Command Searching > Utility, Design and Plant Patents
`Terms: patno=6-386982 (Edit Search | Suggest Terms for My Search)
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`8
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`
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`
`1. Holography News, February 1, 2007, Pg. 8(1), 160716368, 347 words, Key claims
`of Davis dot matrix patent rejected; INDUSTRY NEWS
`US patent number 6,486,982 System for Making
`
`F
`
`2. Omaha World-Herald (Nebraska), October 20, 2004, Wednesday,
`IOWA;MIDLANDS EDITION, Pg. 06B;, 122 words, Probation issue sends Omaha
`woman to jail, Todd Cooper
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`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`METHOD FOR TRANSMITTING
`A DESIRED DIGITAL VIDEO OR
`
`AUDIO SIGNAL
`
`) ) ) ) ) ) ) ) ) )
`
`In re Application of:
`
`ARTHUR R. HAIR
`
`Reexamination Control No. 90/007,402
`
`Reexamination Filed:
`
`January 31, 2005
`
`Patent Number: 5,191,573
`
`Examiner: . Roland Foster
`
`Mail Stop Ex Parte Reexamination
`Commissioner for Patents
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`Sir:
`
`RESPONSE
`
`In response to the Office Action for the above-identified reexamination dated
`
`March 17, 2007, please enter the following remarks.
`
`Remarks begin on page 2 of this paper.
`
`
`
`5654-8u.s.PTg37,'
`
`Page 00863
`
`

`
`REMARKS
`
`Claims 1 through 6, which originally issued in the patent under reexamination,
`
`and new Claims 44 through 49, are currently pending in the reexamination.
`
`I.
`
`SUMMARY
`
`The Office essentially has reiterated its previous position regarding the
`
`entitlement of the claims as issued in U.S. Patent No. 5,191,573 (the “’573 Patent”) to the
`
`proper priority date of June 13, 1988. Patentee again wishes to point out that the Office
`
`has exceeded its jurisdiction in extending the instant reexamination to consider issues of
`
`written support and enablement, which clearly are outside the mandate given to the
`
`Office in the reexamination statutes. The Office repeatedly cites the Manual of Patent
`
`Examination Proceed (“MPEP”) as granting authority to consider in reexamination issues
`
`related to priority. In fact, a number of the sections of the MPEP cited by the Office as
`
`granting authority to address intervening references in reexamination are not themselves
`
`concerned with reexamination, but rather initial examination. Further, Patentee
`
`respectfully points out that, even with respect to MPEP sections that are relevant to
`
`reexamination, these sections merely set forth PTO procedures. The MPEP is not a rule
`
`or statement of law, and thus the MPEP cannot by itself grant any authority not
`
`previously granted by statute.
`
`Nonetheless, even if it were within Office’s mandate to consider issues of priority,
`
`the Office clearly is not empowered to address any issues where they do not themselves
`
`present new issues related to patentability. As pointed out in detail by Patentee in the
`
`Response to the Office Action of September 29, 2006, all of the issues of alleged new
`
`matter now specifically raised in the instant reexamination were addressed previously by
`
`Page 00864
`
`

`
`the original examiner, Examiner Nguyen, during the initial examination of the ‘5 73
`
`Patent. Patentee herein incorporates all arguments made in the Response to the previous
`
`Office Action concerning this issue as if repeated in their entirety.
`
`Additionally, Patentee in the Response to the previous Office Action pointed out
`
`where each element in the claims currently in reexamination is supported in the
`
`specification as originally filed. Further, Patentee specifically pointed out in detail that
`
`the invention was in fact enabled as of June 13, 1988. As specifically addressed in
`
`Patentee’s Response to the previous Office Action, the Office is applying an improper
`
`standard for 35 U.S.C. § 112, first paragraph, written support and enablement. Patentee
`
`also incorporates herein all arguments concerning this issue made in the Response to the
`
`previous Office Action as if repeated in their entirety.
`
`Many of the new rejections of Claims 1 through 6 and 44 through 49 under
`
`Section 112, first paragraph, regarding written support and enablement similarly are
`
`improper because they address issues already decided during the initial examination of
`
`the ‘573 Patent. With respect to any issues under Section 112, first paragraph, now raised
`
`by the Office that may not have previously been decided, Patentee demonstrates herein
`
`that Claims 1 through 6 and 44 through 49 are fully supported and enabled by the
`
`specification originally filed on June 13, 1988.
`
`As a result, Patentee reiterates its position that U.S. Patent No. 4,949,187 to
`
`Cohen (Cohen) cited by the Office does not qualify as prior art and is not available for
`
`the purposes of rejections under 35 U.S.C. §§ 102 and 103. Patentee similarly
`
`incorporates herein all arguments made in the Response to the previous Office Action
`
`concerning this issue as if repeated in their entirety.
`
`Page 00865
`
`

`
`To the extent the Office repeats rejections asserted in the previous Office Action
`
`based on references that are available as prior art, Patentee reiterates its position that
`
`those rejections are improper and should be withdrawn. With respect to new rejections
`
`under 35 U.S.C. §§ 102 and 103 that are based upon appropriate prior art, Patentee
`
`similarly demonstrates herein that those rejections are improper and should be
`
`withdrawn.
`
`II.
`
`THE OFFICE IS NOT EMPOWERED TO REASSIGN PRIORITY DATES
`DURING REEXAMINATION
`
`The ‘573 Patent issued from U.S. Patent Application Serial No. 07/586,391 (the
`
`“’391 Application”), which was filed as a continuation of U.S. Patent Application Serial
`
`No. 07/206,497 (the “’497 Application”). The Office admits the ‘573 Patent is not a
`
`continuation-in—part, but then asserts that the ‘573 Patent “shares the characteristics of a
`
`continuation-in-part.” Based on this novel characterization of the ‘S73 Patent, the Office
`
`proceeds to revisit the entitlement of the claims in the ‘573 Patent to the June 13, 1988
`
`priority date previously awarded by Examiner Nguyen.
`
`A.
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`_ THE OFFICE IS ATTEMPTING TO REASSIGN THE PRIORITY DATE
`OF THE ‘573 PATENT
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`The Office asserts that “no priority dates have been ‘reassigned’ by the
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`examiner.” However, this is exactly what the Office has done.
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`1.
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`Examiner Nguyen Assigned A Priority Date Of June 13, 1988 To The
`Claims In The ‘573 Patent
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`MPEP § 602.05(a) states unequivocally that, “[i]f the examiner determines that
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`the continuation or divisional application contains new matter relative to the prior
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`application, the examiner should so notify the applicant in the next Office action. The
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`examiner should also (A) require a new oath or declaration along with the surcharge set
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`forth in 37 CFR 1.16 (t); and (B) indicate that the application should be redesignated as a
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`continuation-in-part.” ‘
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`During initial examination of the ‘573 Patent, the ‘391 Application was filed as a
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`“continuation” of the ‘497 Application and thus, as a preliminary matter, was entitled to
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`the filing date of the original application, June 13, 1988. Examiner Nguyen reviewed all
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`amendments made to the specification and claims of the ‘497 Application, and did not
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`require a new oath or declaration or require that the application be refiled as a
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`continuation—in—part. Based on the MPEP sections cited by the Office and the Patentee,
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`implicit in this is the fact that Examiner Nguyen thereby assigned the priority date of
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`June 13, 1988 to the ‘391 Application.
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`_
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`Further, during prosecution of the ‘391 Application, Examiner Nguyen did make
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`certain specific new matter rejections based on amendments to the specification and
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`claims. Those rejections were traversed and responded to by the applicant, including the
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`submission of a Declaration under 37 CFR § 1.132, which was determined to be
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`persuasive by Examiner Nguyen.‘ The new matter rejections subsequently were
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`withdrawn and the application proceeded to issue as the ‘573 Patent. Therefore,
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`Examiner Nguyen expressly concluded that the alleged new matter was in fact supported
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`by the originally filed specification; i.e. was disclosed in the manner provided by the first
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`paragraph of Section 112. As a result, by definition, Examiner Nguyen determined that
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`the claims in the ‘573 Patent were entitled to claim priority to the original June 13, 1988
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`filing date.
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`' As an ancillary matter, the Office now seems to question the persuasiveness of the Section 1.132
`Declaration submitted by applicant during examination of the ‘391 Application. Patentee respectfully
`points out this is not an issue that can be addressed on reexamination. The original Examiner must be
`assumed to have done his job properly in the initial examination.
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`The Office Is Attempting To Reassign A Priority Date Of September
`18, 1990 To The Claims Of The ‘573 Patent
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`The Office now asserts, contrary to Examiner Nguyen, that the ‘573 Patent was
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`only entitled to a priority date of September 18, 1990. Essentially, the Office has made
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`an ex post determination that Examiner Nguyen should have either required that the
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`amendatory text be deleted, or should have required that the application be refiled as a
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`continuation-in-part with a new oath or declaration. In short, it is the Office’s position
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`that Examiner Nguyen should have, at some point, assigned a priority date of September
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`18, 1990 to the ‘391 Application during prosecution. After extensively reviewing the
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`amendments to the specification and claims during prosecution of the ‘39l Application,
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`Examiner Nguyen assigned the priority date of June 13, 1988. Dissatisfied with
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`Examiner Nguyen’s conclusion, the Office now has taken it upon itself to revisit the issue
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`and reassign the priority date of September 18, 1990 for the ‘573 Patent.
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`3.
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`The Office is Attempting To Create A New Designation Of “De Facto
`CIP”
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`The Office admits the ‘573‘Patent is not a continuation-in-part application, but
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`then asserts the ‘573 Patent “shares the characteristics of a continuation-in-part,” and
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`cites this as a basis for assigning a later priority date to the claims of the ‘573 Patent. The
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`Office points to text added to the specification of the ‘573 Patent that was not found in
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`the originally filed specification as grounds for this new designation. The Office further
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`cites MPEP § 201.11 to support its conclusion. However, the presence of additional or
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`different text in the specification of a continuation application does not by itself render
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`the continuation application a continuation-in-part. The prohibition of MPEP § 201 .11
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`concerns addition of text that would constitute new matter. Indeed, MPEP § 602.05
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`explicitly contemplates that changes and additions to the text of specifications in
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`continuation and divisional applications can occur and are acceptable so long as no new
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`matter is introduced:
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`“A copy of the oath or declaration from a prior non—provisional application may be
`filed in a continuation or divisional application even ifthe specification for the
`continuation or divisional application is differentfrom that of the prior application,
`in that revisions have been made to clarify the text to incorporate amendments made
`in the prior application, or to make other changes provided the changes do not
`constitute new matter relative to the prior application. See 37 CFR l.52(c)(3).”
`MPEP § 602.05 (emphasis added).
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`Further, the Office has cited no authority that empowers it, in the context of
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`reexamination, to treat a continuation application as a continuation-in-part because the
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`examiner in reexamination believes the continuation “shares characteristics of a
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`continuation-in-part.” Patentee submits that an application or patent is either a
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`continuation-in-part, or it is not. There simply is no designation in the statutes or
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`regulations for patents that are continuations, but “share the characteristics of
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`continuations-in-part”, as asserted by the Office. Patentee therefore respectfully submits
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`that the Office has manufactured the designation of “defacto CIP” to allow the Office to
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`cite references that otherwise would be unavailable as prior art.
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`The Off1ce’s reliance on In re Ruscetta, 255 F.2d 687 (CCPA 195 8) and In re van
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`Langenhoven, 458 F.2d 132 (CCPA 1972) as authority for creating a defacto CIP is
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`misplaced. Both Ruscetta and van Langenhoven deal explicitly with patents that issued
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`from continuation-in-part applications. Further, both cases pre-date the reexamination
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`statute, and thus say nothing about the proper conduct of reexamination proceedings.
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`The Office has cited no further authority to support its interpretation of Ruscetta or van
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`Langenhoven. Moreover, the Office cannot expand the holdings of these cases simply by
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`inserting references to them in MPEP sections dealing with the scope of reexamination.
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`“The MPEP sets forth PTO procedures; it is not a statement of law.” Regents of the
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`University ofNew Mexico v. Knight, 321 F.3d 1111, 1121 (Fed. Cir. 2003).
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`B.
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`THE PRIORITY DATE OF THE CLAIMS OF THE ‘573 PATENT IS NOT
`A NEW ISSUE RELATED TO PATENTABILITY AND CANNOT BE
`REVISITED BY THE OFFICE IN REEXANHNATION
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`The Office asserts the determination of the priority date of the claims in the ‘573
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`Patent is a new issue related to patentability. The Office then back tracks on this
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`statement by saying that, even if were not a new issue, nothing bars the Office from
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`revisiting the issue in reexamination.
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`1.
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`The Entitlement Of The Claims In The ‘573 Patent To The Priority
`Date Of June 13, 1988 Was Addressed By Examiner Nguyen During
`The Original Prosecution Of The ‘573 Patent
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`The Office admits that Examiner Nguyen did in fact address the issue of the
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`alleged new matter shown in Table I of the instant Office Action. The Office further
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`admits that Patentee has effectively demonstrated as much through the table submitted
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`with Patentee’s Response to the Office Action of September 29, 2006. However, the
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`Office then asserts that Examiner Nguyen did not have an opportunity to compare all of
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`the amendments to the claims and_specification made during prosecution to the originally
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`filed specification. The Office refers to Table II in the instant Office Action for examples
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`of “gradually added new matter” which the Office asserts was not addressed by Examiner
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`Nguyen. However, on reviewing Table II, it is apparent that it contains the same alleged
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`new matter as Table I, which the Office already has admitted was reviewed and passed on
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`by Examiner Nguyen. In fact, the text referred to by the Office in the instant Office
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`Action appears to be the same text presented in the previous Office Action with the
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`exception that it has now been relabeled Table II.
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`2.
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`' The Absence Of Rejections Based On Intervening References During
`The Initial Examination Of The ‘573 Patent Does Not Demonstrate
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`Examiner Nguyen Failed To Address The Issue Of Priority
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`The Office asserts that Examiner Nguyen never had reason to consider the
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`propriety of the claim of priority made in the ‘39l Application, because no intervening
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`references were ever cited by the Examiner. This line of argument by the Office
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`effectively puts the rabbit in the hat, by concluding that the absence of any intervening
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`references in the record is conclusive evidence the issue of priority was never addressed
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`by Examiner Nguyen. Patentee respectfully submits it is more plausible to conclude that
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`no intervening references were cited because Examiner Nguyen properly concluded the
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`‘391 Application was entitled to the priority date of June 13, 1988. Not only is Patentee’s
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`position more plausible on its face, it is fully supported by the written record as detailed
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`in Section II(A)(1) above.
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`3.
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`MPEP § 22S8.IV.E Does Not Empower The Office To Revisit The
`Issue Of The Entitlement Of Claims In An Issued Patent To A
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`Priority Date
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`The Office cites MPEP § 22S8.IV.E as an example of revisiting priority issues in
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`reexamination. However, most of this section addresses only the procedural issues in
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`reexamination for perfecting a claim for priority made previously during initial
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`examination.
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`The cited section also deals with claiming priority under 35 U.S.C. § 120 to an
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`earlier filed copending application during reexamination, where there was an earlier
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`failure to make such a claim. Where a patentee seeks to correct an earlierfailure to claim
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`priority, that would be a E issue, since the priority claim was neg before the Office in
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`the first place. However, in the instant case, a claim of priority w_as made by the
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`applicant and Examiner Nguyen determined the ‘573 Patent in fact was entitled to the
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`priority date of June 13, 1988. Since a claim of priority is, by definition, before the
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`Examiner when it is made, it can never be a new issue in reexamination; i.e. one that the
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`original Examiner had no reason to consider. Indeed, MPEP § 201.11, cited favorably by
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`the Office, requires an Examiner to address the issue during initial examination.
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`Further, MPEP § 2258.IV.E does not address revisiting and removing an earlier
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`claim of priority made in an application, and does not address the entitlement of an issued
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`patent to an earlier claimed right of priority.
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`Finally, MPEP § 2258.IV.E addresses reexaminations initiated by the Patentee,
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`and does not empower the Office to address the issue of entitlement to a claimed priority
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`date where the issue is not first raised by the Patentee.
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`The Office also cites MPEP § 1402, which concerns reissue proceedings, as an
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`example of addressing priority issues. However, again, the cited section deals with
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`adding or changing claims of priority, where an earlier claim contained an error or was
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`not made at all. Patentee further respectfully points out that, while MPEP § 1405 does
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`address deletion of a priority claim in reissue, that section does not empower the Office
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`on its own to determine the propriety of the priority claim. Finally, 37 CFR § 1.552(c) is
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`explicit about the scope of reexamination:
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`“Issues other than those indicated in paragraphs (a) and (b) of this section will not
`be resolved in a reexamination proceeding. If such issues are raised by the patent
`owner or third party requester during a reexamination proceeding, the existence of
`such issues will be noted by the examiner in the next Office action, in which case
`the patent owner may consider the advisability offiling a reissue application to
`have such issues considered and resolved.” 37 CFR 1.552(c) (emp