BPAI Can Trigger “New Ground of Rejection” Through Change in Rationale Alone
In re Leithem (decided 9/19/11)By: Hunter Keeton
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What This Means to You
- If BPAI affirms examiner’s rejection but changes the explanation or reasoning, the Board is required to let applicant respond to new rationale on the merits.
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Overview
The US Court of Appeals for the Federal Circuit (Federal Circuit) answered for the first time the question of what happens when the Board of Patent Appeals and Interferences (BPAI) affirms an examiner’s rejection of a claim but, in doing so, changes the rationale of the rejection. In In re Leithem, the Federal Circuit determined a “new ground of rejection” is established, requiring rehearing or reopening prosecution.
Case Background
Leithem filed a patent application for an improved diaper with a core of fluffed wood fiber pulp. The examiner rejected the relevant claim as obvious over a prior art patent that allegedly showed “fluffed” pulp. On appeal to the BPAI, Leithem argued that the reference did not show “fluffed” pulp, just a wet slurry. The BPAI’s initial decision affirmed the rejection by finding that the same prior art patent showed pulp which “may be fluffed.”
Leithem petitioned for rehearing, arguing that the BPAI relied on a “new ground for rejection” by changing the characterization of the prior art from “fluffed” pulp to pulp which “may be fluffed.” The Board disagreed, and Leithem appealed to the Federal Circuit.
Decision Analysis
The Federal Circuit vacated the BPAI’s decision. The Administrative Procedure Act (APA) requires “full and fair” treatment of claims at the administrative level. Before the PTO, if the BPAI affirms an examiner’s rejection on a “new ground,” this requirement means the applicant must be given a chance to address the new ground of rejection, either through rehearing before the BPAI or by reopening prosecution in front of the examiner.
Here, the BPAI’s initial decision was a “new ground” because it changed the “thrust” of the rejection. The examiner said the prior art disclosed “fluffed” pulp, and that is what Leithem argued against. The Board’s changed interpretation that the same art shows fluffable pulp is a new ground of rejection, requiring rehearing or reopening prosecution.
Takeaway
For patent applicants who are appealing an examiner’s rejections to the Board, look to see if the Board affirms the rejections using different reasoning than the examiner, even if the Board bases its rejections on the same prior art as the examiner. If so, we recommend filing a petition for rehearing or to reopen prosecution so you can address the new reasoning on the merits.
