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Thursday, January 16, 2014

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AFFIRMED
Tech Center 2100 Computer Architecture and Software
2186 Ex Parte Evans et al 10965201 - (D) FISHMAN 103 HEWLETT-PACKARD COMPANY BIRKHIMER, CHRISTOPHER D

Tech Center 2600 Communications
2645 Ex Parte Brass et al 10579321 - (D) MORGAN 103 Norris McLaughlin & Marcus PA HAMMONDS, MARCUSC

REEXAMINATION

AFFIRMED
Tech Center 3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review
3616 Ex parte AUTOMOTIVE TECHNOLOGIES INTERNATIONAL, INC. Appellant, Patent Owner 90012015 6942248 10/114,533 SONG 102(e)/SNQP BRIAN ROFFE, ESQ; Third Party Requester: Brinks, Hofer, Gilson & Lione ENGLISH, PETER C original TO, TOAN C

In applying this statutory language, the Federal Circuit stated that "to decide whether a reference that was previously considered by the PTO creates a substantial new question of patentability, the PTO should evaluate the context in which the reference was previously considered and the scope of the prior consideration and determine whether the reference is now being considered for a substantially different purpose." In re Swanson, 540 F.3d 1368, 1380 (2008) (concluding that prior art originally used as a secondary reference in an obviousness rejection was sufficient to establish SNQP when considered as an anticipatory reference) (citing H.R.Rep. No. 107-120, at 3 ("The appropriate test to determine whether a 'substantial new question of patentability' exists should not merely look at the number of references or whether they were previously considered or cited but their combination in the appropriate context of a new light as it bears on the question of the validity of the patent.")). "[A]n 'argument already decided by the Office, whether during the original examination or an earlier reexamination' cannot raise a new question of patentability . . . . As [the Federal Circuit] explained in In re Recreative Technologies Corp., the substantial new question requirement 'guard[s] against simply repeating the prior examination on the same issues and arguments' and bars 'a second examination, on the identical ground that had previously been raised and overcome.'" Id. (Citations omitted, emphasis added).

FEDERAL CIRCUIT

AFFIRMED IN PART, REVERSED IN PART, AND REMANDED
Tech Center 1600 Biotechnology and Organic Chemistry
1647 1676 NOVARTIS AG AND NOVARTIS VACCINES AND DIAGNOSTICS, INC., Plaintiffs-Appellants, AND DANA-FARBER CANCER INSTITUTE, Plaintiff, v. MICHELLE K. LEE, Deputy Director, United States Patent and Trademark Office, Defendant-Cross Appellant. 2013-1160, -1179 7,807,155 11/658,344 7,968,518 10/570,097 7,973,031 10/493,786 TARANTO how much time to add, under 35 U.S.C. § 154(b) McCarter & English, LLP; Appellate Staff, Civil Division, United States Department of Justice HAMUD, FOZIA M; GUDIBANDE, SATYANARAYAN R; COLEMAN, BRENDA LIBBY

VACATED AND REMANDED
Tech Center 1600 Biotechnology and Organic Chemistry
1624 1628 EXELIXIS, INC., Plaintiff-Appellee, v. MICHELLE K. LEE, Deputy Director, United States Patent and Trademark Office, Defendant-Appellant. 2013-1175 8,067,436 11/753,514 2013-1198 7,989,622 11/988,862 PER CURIAM how much time to add, under 35 U.S.C. § 154(b) Honigman Miller Schwartz and Cohn, LLP; Appellate Staff, Civil Division, United States Department of Justice; original HONIGMAN MILLER SCHWARTZ AND COHN LLP  BERNHARDT, EMILY A; HEYER, DENNIS

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