Wednesday, October 8, 2014

Board reminder that Federal Circuit appeal, not PTAB Rehearing, is the appropriate forum to reargue issues already decided by the PTAB

The PTAB Rehearing decision Ex parte Brozell criticized an Applicant for filing a Request for Rehearing in order to argue that the Board had erred on claim construction and on the conclusion of obviousness:
[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.
(Emphasis added.)

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.”
Rambus, Inc. v. Rea, 731 F.3d 1248, 1255 (Fed. Cir. 2013) (internal citations omitted).
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."

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.


  1. The proper course for an appellant dissatisfied with a Board decision is to seek judicial review
    Nothing of import here. Argue whatever you want in a Request for Rehearing but bear in mind that the Board HATES to admit that they were wrong and that it is almost a lost cause -- even with the best of arguments. The worst (i.e., completely bogus) statements of law and/or fact that I've seen come out of the Board have been in Decisions on Request for Rehearing in which the Board attempts to defend indefensible positions.

    More than anything, the APJs' reactions in Decisions on Request for Rehearing make question the integrity of the APJs at the Board.

    Actually, you cannot argue anything. However, I have never had a problem arguing against the Board's analysis where it is something different than that presented by the Examiner. If it is different, then it is a new grounds.

  2. I'm getting a sense that the new influx of APJs to the PTAB is bringing a bit of a change to the Board in that these include a number of outsiders (that is, people who didn't come up the ranks of the PTO) are not quite the shills for the Examiners that the BPAI insiders were.

  3. are not quite the shills for the Examiners that the BPAI insiders were
    I agree. They weren't hired in the "reject, reject, reject" era and many don't have the previously-been-an-examiner taint to them.

  4. I've seen some of the newly hired APJ's smack the examiners upside the head pretty good. But they're not going to reward poor advocacy. They're as likely to conclude "attorney arguments are not evidence" or cite boilerplate nonsense like In re Keller as the lifer APJ's.