[A] request for rehearing is not an opportunity to express disagreement with a decision. The proper course for an appellant dissatisfied with a Board decision is to seek judicial review, not to file a request for rehearing to reargue issues that have already been decided.
C.F.R. 41.52(a)(1) requires the Request for Rehearing to "state with particularity the points believed to have been misapprehended or overlooked by the Board." According to the Board, the rehearing arguments did nothing more than criticize the Board's analysis in the Original Decision. "Despite how these sections of the Request are titled, Appellant does not identify particular evidence or arguments from the briefing and demonstrate that they were misapprehended or overlooked."
The Rehearing Request also argued that the Original Decision had included a new ground of rejection that was not designed as such. The Federal Circuit has explained new grounds in the context of a PTAB decision as follows:
The Board may not “rel[y] on new facts and rationales not previously raised to the applicant by the examiner.” Of course, the Board is not required to “recite and agree with the examiner’s rejection in haec verba” in order to ensure that the PTO has provided adequate notice. And the Board may elaborate on the examiner’s findings, so long as the appellant had an adequate opportunity to respond to the Board’s findings during the PTO proceeding. The ultimate criterion is whether the appellant has had before the PTO a “fair opportunity to react to the thrust of the rejection.”According to the Applicant, this statement in Original Decision amounted to "a new finding that changes the thrust of the rejection": “We note that Boots discloses that the container can be injection molded to form a monolithic, one-piece structure."
Rambus, Inc. v. Rea, 731 F.3d 1248, 1255 (Fed. Cir. 2013) (internal citations omitted).
However, the Board concluded this was not a new finding, pointing to this statement in the Examiner's Answer: “Boots discloses a package comprising a container of one-piece integrally molded plastic construction.” The obviousness rejection affirmed by the Original Decision was therefore not a new ground of rejection.