On June 25, 2010, the Patent Office clarified its procedure for seeking review of a finding of a substantial new question of patentability in ex parte reexamination proceedings. See Federal Register Notice v75 pp. 36357-8 (6-25-10) at this link: (Fed Reg v 75 pp36357-8 (6-25-10) – re Ex Parte Reexam Proc). In short the Notice provides that:
1) If the patent owner timely challenged a SNQ adopted by the Office to order the reexam (an “initial SNQ”), the patent owner can have the BPAI consider that issue on appeal;
2) If the patent owner failed to challenge the initial SNQ, but it was adopted prior to 6/25/2010, the patent owner can have the BPAI consider that issue in appeal.
But what happens if a new ground of rejection is proposed by the Examiner in ex parte reexamination after the reexamination is ordered? Ex parte Yasukochi et al. relates to what is appealable vs. what is petitionable. I think it can be summarized roughly as:
1) A SNQ to start a reexamination can be disposed of in the reexam, and a new rejection can be entered into the reexam.
2) If the new rejection is based on a new reference not related to the SNQ, then a procedural issue arises which is petitionable, but not appealable under the facts in ex parte Yasukochi.
In this case, a rejection was entered during the reexamination on prior art not in the request (which I believe happened to be from prior art found by the Examiner after the order for the reexam). That entry was deemed to be procedural and the patent owner must use petitions practice to challenge it because the BPAI will not review it on appeal.
So, in cases like this one, a patent owner can address the procedural issue by petition in the reexam because the BPAI may not review it on appeal. Of course, this is an interesting result in view of recent warnings by the Patent Office to be careful about overzealous use of petitions.