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