concurring in the judgment as to Serial No. 08/218,756, dissenting as to Reexamination Nos. 98/003,494 and 90/003,343.
Double patenting is not a ground of rejection that is permitted to be raised under the reexamination statute. I must, respectfully, dissent from the panel majority’s decision to ignore the statutory limitations of reexamination.
The reexamination statute is the result of a carefully designed compromise, balancing the advantages of resolution of certain important issues by reexamination in the Patent and Trademark Office, against the disadvantages of potential harassment of patentees after their patent has issued. For this reason, the statute requires that reexamination be limited to “prior art consisting of patents or printed publications” cited to the Office under 35 U.S.C. § 301. Section 302 authorizes a request for reexamination “on the basis of any prior art cited under the provisions of section 301,” and states that the request “must set forth the pertinency and manner of applying cited prior art.” Patentability based on prior art is the only available ground of reexamination.1
*969Double patenting is not based on prior art. See, e.g., Quad Environmental Tech. Corp. v. Union Sanitary Dist., 946 F.2d 870, 874, 20 USPQ2d 1392, 1394 (Fed.Cir.1991) (a double patenting rejection “does not mean that the first-filed patent is a prior art reference under § 102 against the later-filed application. [Citation omitted.]”); In re Kaplan, 789 F.2d 1574, 1579, 229 USPQ 678, 682 (Fed.Cir.1986) (“In considering the question [of obviousness-type double patenting], the patent disclosure may not be used as prior art. [Citation omitted.]”); In re Longi, 759 F.2d 887, 892 n. 4, 225 USPQ 645, 648 n. 4 (Fed.Cir.1985) (“the patent principally underlying the double patenting rejection is not considered prior art. [Citation omitted.]”).
Limitation of reexamination to prior art was the legislative response to concerns lest the life of an issued patent be wasted and the patentee’s legitimate rights be abused by third party requests for reexamination, for there are myriad grounds on which patentability is subject to challenge. See Patlex Corp. v. Mossinghoff, 758 F.2d 594, 601, 225 USPQ 243, 248 (Fed.Cir.1985). In In re Recreative Technologies Corp., 83 F.3d 1394, 1397, 38 USPQ2d 1776, 1778 (Fed.Cir.1996) this court reviewed the legislative history and its “serious concern that reexamination not create new opportunities for abusive tactics and burdensome procedures.” The requirement that “[n]o grounds of reexamination were to be permitted other than on new prior art and sections 102 and 103” was a well-considered balance of the arguments for and against reexamination. H.R.Rep. No. 96-1307, at 3 (1980), reprinted in 1980 U.S.C.C.A.N. 6460, 6462 (reexamination is limited to new prior art).
The court again explained in In re Portola Packaging, Inc., 110 F.3d 786, 789, 42 USPQ2d 1295, 1298 (Fed.Cir.1997) that “Congress recognized that holdings of patent invalidity by courts were mostly based on prior art that was not before the PTO.” (Citing Patent Reexamination: Hearings on S.1679 before the Senate Comm, on the Judiciary, 96th Cong. 14 (1980) (testimony of Commissioner Sidney Diamond) (referring to a 1974 study showing that 66-80% of the patents held invalid involved uncited prior art)). See In re Etter, 756 F.2d 852, 856, 225 USPQ 1, 4 (Fed.Cir.1985) (in banc) (the purpose of reexamination is to remedy overlooked prior art).
To achieve a contrary holding for the ground of double patenting, my colleagues invoke “efficiency” and offer the explanation that reexamination is cheaper and less burdensome than litigation. However, these were not the only issues weighed and balanced in this legislation, for a primary concern was the encumbrance on the patent during reexamination proceedings. Indeed, here it is the patentee who is objecting to having been brought into involuntary reexamination by third parties while the patents are in litigation.
It is not our role to amend the statute, and it is not our privilege to ignore the statute. Indeed, I take note that Congress has recently held hearings on certain proposals to enlarge the scope of reexamination. Meanwhile, the statute continues to bar reexamination on the ground of double patenting.
. The panel majority's suggestion that the Commissioner’s authority to act "on his own initiative,” 35 U.S.C. § 303(a), somehow enlarges the grounds of reexamination is not a tenable reading of the statute.