How are unusual fact patterns handled in patent reexaminations with respect to Portola Packaging?

The MPEP acknowledges that cases with unusual fact patterns may occur in patent reexaminations, particularly when considering the Portola Packaging decision. In such cases:

• The reexamination should be brought to the attention of the Central Reexamination Unit (CRU) or Technology Center (TC) Director.
• The CRU or TC Director will determine the appropriate action to be taken.

Examples of unusual fact patterns include:

1. When only select information from a textbook was previously discussed, but other relevant information from the same textbook is now being relied upon.
2. When a reference was not believed to qualify as prior art in a previous examination due to dating issues or declarations, but new information proves its prior art status.
3. When a foreign language prior art reference was cited but never completely and accurately translated in the original prosecution.
4. When dealing with cumulative references that substantially reiterate the teachings of previously considered art.

The MPEP states: “The Office recognizes that each case must be decided on its particular facts and that cases with unusual fact patterns will occur.”

This approach allows for flexibility in handling complex situations while still adhering to the principles established by Portola Packaging and subsequent legislation.

To learn more:

• Portola Packaging
• unusual fact patterns
• patent reexamination
• prior art