## Facts

- Recreative Technologies Corp. owned U.S. Patent No. 4,912,800, directed to a golf-bag-mounted cleaning device using a towel body, a brush, and a mounting mechanism.
- After Recreative sued Preferred Response Marketing, Ltd. for infringement, Preferred requested ex parte reexamination, asserting that five patents and three publications raised a substantial new question of patentability.
- The PTO ordered reexamination, but the proceeding ultimately centered on the Ota reference, which had been cited and considered during original examination for obviousness, and the claims had been allowed over Ota.
- In reexamination, the examiner rejected claims 1, 2, 4–7, and 17 for obviousness under 35 U.S.C. § 103 based on Ota, while not rejecting any claims on the newly cited references.
- On appeal, the Board of Patent Appeals and Interferences reversed the examiner’s § 103 rejection as to claims 1, 2, 4–7, and 17, but sua sponte rejected claims 1, 2, and 4 for anticipation under 35 U.S.C. § 102 based on Ota.

## Issues

1. Whether, in an ex parte reexamination, the PTO may reject claims based on prior art and patentability issues already considered during original prosecution when the rejection does not rest on a “substantial new question of patentability” under 35 U.S.C. § 303.
2. Whether the Board may sua sponte introduce a new ground of rejection under § 102 in reexamination based solely on a previously considered reference.

## Decision

- The Federal Circuit reversed the Board’s § 102 rejection of claims 1, 2, and 4 and remanded.
- The court held that the Board exceeded the statutory authorization governing ex parte reexamination by entering a rejection not tied to a substantial new question of patentability.
- The court emphasized that reexamination is not a mechanism for unlimited reconsideration of validity based on old art previously evaluated during original examination.

## Legal Principles

- Ex parte reexamination may be ordered and conducted only within the limits set by 35 U.S.C. §§ 302–307, including the requirement in § 303 that a “substantial new question of patentability” be raised.
- Reexamination is intended to reconsider patentability in light of new information; it is not a vehicle to re-litigate patentability over prior art already applied and resolved in original prosecution without a qualifying new question.
- The PTO (including the Board on appeal in reexamination) may not sustain or introduce rejections that are untethered to the statutory predicate for reexamination and that merely reframe old art under a different theory (e.g., shifting from § 103 to § 102) when no substantial new question is presented.

## Conclusion

The Federal Circuit ruled that, although reexamination can reassess patentability when statutory conditions are met, the PTO exceeded its reexamination authority by issuing a new anticipation rejection based solely on a reference already considered during original prosecution, absent a substantial new question of patentability.


In re Recreative Techs. Corp., 83 F.3d 1394 (Fed. Cir. 1996)