In re WSOU Investments — Adding Claims Does Not Reopen Reexamination

Background

WSOU Investments sought ex parte reexamination of claims in its patent for service-based computer networking. The Patent Trial and Appeal Board reversed the examiner’s original rejection but entered a new obviousness rejection based on the same prior-art reference, Traversat.

WSOU attempted to reopen prosecution by adding new claims while leaving the rejected claims unchanged and submitting arguments that Traversat taught away from the invention. The Patent Office’s Central Reexamination Unit treated the filing as a rehearing request rather than a proper reopening request, and the Board denied rehearing.

The Court’s Holding

The Federal Circuit affirmed both the obviousness ruling and the procedural handling of WSOU’s response. Substantial evidence supported the Board’s finding that Traversat disclosed locating a named peer and using that same peer name to support a connection. The Board applied, rather than altered, the governing claim construction, and Traversat did not discourage the claimed approach strongly enough to teach away from it.

The court also held that the Patent Office did not abuse its discretion by refusing to reopen prosecution. Under 37 C.F.R. § 41.50(b)(1), an applicant responding to a new ground must appropriately amend the rejected claims, submit new evidence relating to those claims, or both. WSOU added separate claims but did not amend or cancel the claims the Board had rejected.

Nor did WSOU supply genuinely new evidence. Its teaching-away presentation was new argument based on a reference already in the record. The agency therefore properly sent the response back to the Board as a rehearing request, and that procedure did not violate due process.

Key Takeaways

• Adding new claims does not necessarily reopen prosecution when the Board’s rejected claims remain untouched.
• New attorney argument about evidence already of record is not “new evidence” for purposes of Rule 41.50(b).
• An applicant facing a new Board rejection must choose and satisfy the regulation’s reopening or rehearing path with precision.

Why It Matters

The opinion gives patent owners a clear procedural warning. After the Board enters a new ground of rejection, a response labeled as reopening prosecution will not be accepted merely because it adds claims or reframes existing arguments. The response must directly address the rejected claims through an appropriate amendment or genuinely new evidence.

That distinction affects both strategy and timing in reexamination and other Patent Office appeals. A procedurally deficient choice can leave the Board’s rejection in place without another round before the examiner.