Are Appeals from Reexamination Unlikely to Succeed?

A reader contacted me yesterday regarding my January 8, 2008 post titled, "Patent Reexamination Statistics."  He writes:

I am currently looking at an interesting question about reexams that I don't think is dealt with in these stats or in others I've seen on the web so far.  The question is this:

Are appeals (by patentees) from reexamination being especially unlikely to succeed?  e.g. as compared with appeals from initial examination.

In other words, suppose the PTO finally rejects all claims on reexamination of a patent, and the patentee then appeals -- is it conventional wisdom that the BPAI and/or Federal Circuit are pretty unlikely to reverse and uphold the patent?

By comparison, it seems that final rejections on initial examination (i.e. regular prosecution) very often do get reversed on appeal.  Easy to think of famous "in re" examples.  Dennis Crouch at the Patently-O blog even has statistics on that.

However I personally can't think of cases offhand where appeal succeeded in the context of patent reexamination -- except for a few cases where clear issues of law were involved, e.g. cases where the PTO relied solely on prior art that had already been considered during initial examination.  But I don't recall cases offhand where BPAI or Federal Circuit reversed a reexamination because they found the prior art less compelling than the PTO did.

Are you aware of reexamination cases where BPAI or the Federal Circuit reversed a reexamination under this scenario?  Please share the information on these cases by commenting on this post.  Thanks!

Comments

[Steven]

I received some helpful information on this from Mr. Randy Digges (of the Rankin Hill firm), who wrote:

This link provides the Fiscal Year 2008 statistics for all appeals to the Board of Patent Appeals and Interferences:

http://www.uspto.gov/web/offices/dcom/bpai/docs/receipts/fy2008.pdf

Technology Center 3900 handles all reexaminations. For the period 10/1/07 to 9/30/08, 19 appeals in reexamination cases were resolved. 14 were affirmed (~74%), 1 was affirmed in part (~5%), 2 were reversed (~10%) and 2 were resolved for administrative reasons (~10%). The success rate on appeal in reexam during FY 2008 was about half as high as it was for regular appeal cases (~24%).