The determination under 35 U.S.C. 303(a) whether or not “a substantial new question of patentability” is present can be based upon any prior art patents or printed publications. 35 U.S.C. 303(a) and 37 CFR 1.515(a) provide that the determination on a request will be made “with or without consideration of other patents or printed publications,” i.e., other than those relied upon in the request. The examiner is not limited in making the determination based on the patents and printed publications relied on in the request. The examiner can find “a substantial new question of patentability” based upon the prior art patents or printed publications relied on in the request, a combination of the prior art relied on in the request and other prior art found elsewhere, or based entirely on different patents or printed publications. The primary source of patents and printed publications used in making the determination are those relied on in the request. For reexamination ordered on or after November 2, 2002, see MPEP § 2242, subsection II.A. for a discussion of “old art.” The examiner can also consider any patents and printed publications of record in the patent file from submissions under 37 CFR 1.501 which are in compliance with 37 CFR 1.98 in making the determination. If the examiner believes that additional prior art patents and publications can be readily obtained by searching to supply any deficiencies in the prior art cited in the request, the examiner can perform such an additional search. Such a search should be limited to that area most likely to contain the deficiency of the prior art previously considered and should be made only where there is a reasonable likelihood that prior art can be found to supply any deficiency necessary to “a substantial new question of patentability.”
The determination should be made on the claims in effect at the time the decision is made (37 CFR 1.515(a)).
The Director of the USPTO has the authority to order reexamination only in those cases which raise a substantial new question of patentability. The substantial new question of patentability requirement protects patentees from having to respond to, or participate in unjustified reexaminations. See, e.g., Patlex Corp.v.Mossinghoff, 771 F.2d 480, 226 USPQ 985 (Fed. Cir. 1985).