"Substantial evidence" doesn't carry the day in IN RE RAVI VAIDYANATHAN

The CAFC did not back up the BPAI on obviousness rejections:
For claims 1–9, we vacate the rejection and remand
for further examination.

The patent examiner has to set up the obviousness case:

The patent examiner is respon-
sible for marshalling the references whose teachings are
most relevant to the claimed invention, and evaluating
the claimed invention against these teachings, from the
viewpoint of a person of ordinary skill in the field of
invention. See Graham, supra; In re Kubin, 561 F.3d
1351, 1355 (Fed. Cir. 2009); see generally In re Oetiker,
977 F.2d 1443, 1445–47 (Fed. Cir. 1992).

Of new arguments:

While the PTO Solicitor’s
argument is new as to what portion of Biggers provides
support for the Board’s findings, we have occasionally
permitted the Solicitor to support the Board, on appeal to
the court, by reference to additional portions of the refer-
ences of record, provided that the applicant has had a fair
opportunity to respond. See In re Hedges, 783 F.2d 1038,
1039 (Fed. Cir. 1986); see also In re Wesslau, 353 F.2d
238, 241 (CCPA 1965) (prior art reference should be
considered in its entirety for what it fairly suggests to one
skilled in the art). Nonetheless, the reviewing court must
review the decision of the Board on the basis of the
Board’s findings, rather than on “post hoc rationalizations
for agency action.” In re Hounsfield, 699 F.2d 1320, 1324
(Fed. Cir. 1983) (quoting Burlington Truck Lines, Inc. v.
United States, 371 U.S. 156, 168 (1962)).

Of shifting postions-->

We conclude, on the evidence and arguments pre-
sented, that the Board did not persuasively explain how a
person of ordinary skill in the art would conclude that
Biggers taught that the trajectory commands produced by
the neural network are to be input into a separate autopi-
lot function. The PTO’s shifting positions do not assist in
appellate review. See In re Thrift, 298 F.3d 1357, 1366
(Fed. Cir. 2002) (citing SEC v. Chenery Corp., 332 U.S.
194, 196 (1947)) (“a reviewing court, in dealing with a
determination or judgment which an administrative
agency alone is authorized to make, must judge the
propriety of such action solely by the grounds invoked by
the agency”). However, we are not prepared to hold that
all three of the PTO’s conflicting interpretations of Big-
gers and other teachings with respect to autopilot func-
tionality are incorrect. We remand for further
development of the record, and full reconsideration by the
agency.

**Separately, on the BPAI (not) allowing claims-->

http://www.uspto.gov/ip/boards/bpai/decisions/prec/fd09006013.pdf

Our decision is limited to the finding before us for review. The Board
does not “allow” claims of an application and cannot direct an examiner to
pass an application to issuance. Rather, the Board’s primary role is to
review adverse decisions of examiners including the findings and
conclusions made by the examiner. See 37 C.F.R. § 41.50(a)(1) (“The
Board, in its decision, may affirm or reverse the decision of the examiner in
whole or in part on the grounds and on the claims specified by the
examiner”).