Can “old art” be used to establish a substantial new question of patentability?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

Yes, “old art” (prior art previously cited or considered by the USPTO) can be used to establish a substantial new question of patentability (SNQ) in certain circumstances. The MPEP states:

“For any reexamination ordered on or after November 2, 2002, the effective date of the statutory revision, reliance on previously cited/considered art, i.e., ‘old art,’ does not necessarily preclude the existence of a substantial new question of patentability (SNQ) that is based exclusively on that old art.”

However, the use of old art to establish an SNQ requires a fact-specific inquiry on a case-by-case basis. The old art must be presented or viewed in a new light or different way compared to its use in earlier examinations. This could involve new arguments or interpretations presented in the reexamination request.