Belkin v. Kappos: PTO’s Determination of the threshold issue in Reexamination is not appealable

Darrin Auito | October 3, 2012

Belkin International, Inc. et al. v. David Kappos, Director, USPTO, et al.

Decided: October 2, 2012

Panel:  Rader, Lourie and Wallach. Opinion by Lourie.


This decision results from a pre-AIA appeal in an inter partes reexamination proceeding.  The issue in this appeal is whether a prior determination that an argument based on a given reference does not raise a substantial new question of patentability (“SNQ”) as to a claim when such an SNQ was raised with respect to certain other prior art is appealable.  The CAFC held that this determination is not appealable and that the proper course of action is to timely petition the Director to review the determination.


Belkin filed a request for inter partes reexamination of U.S. Patent 7,035,281 (the ‘281 patent).  The request alleged ten SNQs regarding claims 1-32 of the ‘281 patent based on four prior art references (A, B, C, and D).  The PTO partially granted Belkin’s request,  determining that references A, B, and C did not raise a SNQ as to claims 1-32 and that reference D did raise an SNQ as to claims 1-3 and 8-10.  The PTO ordered reexamination of claims 1-3 and 8-10.

Belkin filed a petition pursuant to 37 CFR §§ 1.927 and 1.181 to have the Director review the denial of reexamination on claims 4-7 and 11-32.  The petition was denied.  Belkin did not file a petition to review the determination that references A, B, and C did not raise an SNQ concerning claims 1-3 and 8-10, because these claims were being reexamined.  Only claims 1-3 and 8-10 were examined in view of reference D.

The Examiner ultimately determined that reference D did not anticipate any of claims 1-3 and 8-10.  Belkin appealed the Examiner’s decision to the Board, challenging the Examiner’s failure to make rejections involving references A, B, and C that the Director determined did not raise an SNQ.  On appeal, the Board determined that it did not have jurisdiction to decide whether a SNQ exists regarding these references, because “that determination was statutorily non-appealable under 35 USC §315(b) and 37 CFR §41.61.  On rehearing, the Board noted that “Belkin had failed to file a petition … to review the Director’s determination that there was no [SNQ] of patentability for [this issue].”

Belkin appealed the Board’s decision to the CAFC.

Belkin argued that the Board has jurisdiction to consider on reconsideration prior art found not to raise an SNQ “when reexamination is subsequently granted for the same claim on another reference.”  The Director countered that § 312(c) bars the Board from considering prior art not found to raise an SNQ even though an SNQ was found with regard to another reference, because reexamination is ordered only “for resolution of the question” identified by the Director as an SNQ.

The CAFC agreed with the Director and affirmed the Board’s decision

Decision Analysis

The CAFC explained that an inter partes reexamination is a two-step process.

1)      The Director makes a determination “whether a [SNQ] affecting any claim of the patent is raised by the request, with or without consideration of other patents or printed publications.”  35 USC § 312(a).  The statute is clear that the decision is “final and non-appealable.”  § 312(c).

2)      If the Director determines that there is an SNQ, an inter partes reexamination is ordered “for resolution of the question.”  35 USC § 313.  The question to be resolved is the SNQ determined by the Director.

The statutory framework requires that an issue must raise an SNQ, as determined by the Director, with respect to cited prior art before it can be considered during inter partes reexamination.   “[I]f a requester disagrees with the Director’s determination that no [SNQ] … has been raised, 37 CFR §1.927 permits the requester only to file a petition to the Director for review of that decision.”  Applying the statute, the CAFC held that because Belkin did not petition the Director in this case, the decision not to review became final and non-appealable , rendering the issues beyond the scope of the reexamination.

Belkin argued that this issue is appealable because the Examiner’s decision not to reject claims 1-3 and 8-10 based on reference A, B, and C is a decision “favorable to patentability” and therefore not allowing Belkin to appeal this issue would be inconsistent with the appeals statutes, 35 USC § 134(c) and 315(b), and regulations such as 37 CFR § 41.61(a)(2).

The CAFC disagreed because (1) the lack of an SNQ is not a favorable decision on patentability and is explicitly non-appealable under § 312(c), and (2) the only adverse decision Belkin received with respect to references A, B, and C was the determination that the references did not raise an SNQ, which Belkin chose not to petition for review of that determination.

Belkin argued that it did not petition for review because, in accordance with MPEP § 2648, it believed that those claims would be reexamined in view of “all prior art,” including reference A, B, and C.

[N]o petition may be filed requesting review of a decision granting a request for reexamination even if the decision grants the request as to a specific claim for reasons other than those advanced by the third party requester. No right to review exists as to that claim, because it will be reexamined in view of all prior art during the reexamination under 37 CFR 1.937.

MPEP § 2648.  The CAFC distinguished the current situation, stating that “reexamination was ordered based on the requesters proposed … rejection.”  Moreover, the CAFC dismissed the MPEP section, stating:  “[T]he MPEP does not have the force of law, and is only entitled to judicial notice as the PTO’s official interpretation of statutes and regulations with which it is not in conflict.”  Molins PLC v. Textron, Inc., 48 F.3d 1172, 1180 n.10 (Fed. Cir. 1995).

Belkin argued that 37 CFR §1.104 requires the examiner to make a “thorough investigation of the available prior art” during reexamination.  The CAFC disagrees, holding:

[I]n order to reconcile what may otherwise appear to be conflicting provisions, we hold that, under the statute, available prior art may only be considered to answer the specific questions of patentability found by the Director.

A casual reference to “all prior art” in the MPEP or the regulations cannot be interpreted to trump the statutory command.  Statutes rank higher than regulations, which rank higher than the MPEP.

The CAFC concluded that the proper course of action was for Belkin to have petitioned the Director to review the determination that the arguments relying on references A, B, and C did not raise an SNQ pursuant to 37 CFR § 1.927 and that because Belkin did not do so, that decision became final and non-appealable.


This case applies the old law regarding inter partes reexamination.  Nonetheless, it will remain relevant, especially in view of the fact that several hundred requests for inter partes reexamination were filed in the weeks leading up to September 16, 2012.  The PTO will be deciding over the next several months whether or not to grant these requests.  If the PTO denies, or even partially denies, your request, and you wish to challenge the PTO’s determination, then do not wait to appeal that determination.  Instead, timely file a petition pursuant to 37 CFR §1.927 challenging the SNQ determination.  Otherwise § 312(c) will limit your ability to appeal this determination.

However, the new law states (replacing inter partes reexamination with inter partes review) that “[t]he determination by the Director whether to institute an inter partes review under [35 U.S.C. 314] shall be final and nonappealable.”   Under the new law, the threshold is no longer “SNQ,” but whether “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”

Also, remember that “statutes rank higher than regulations, which rank higher than the MPEP.”  In this case, the CAFC quickly “easily discarded” a portion of the MPEP guidelines that conflicted with the patent statute.

Full Opinion

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