The principal issue here is whether the Board of Patent Appeals and Interferences (“Board”), in affirming an examiner’s ruling on reexamination that a patent was invalid as obvious, relied on a new ground of rejection, i.e., a rejection that the examiner had not explicitly made.
The crux was that the Board and the Examiner rejections weren't quite the same:
that the examiner found the ’022 patent obvious in light of Singh as § 102(b) prior art, which includes publications or inventions patented “more than one year prior to the date of the application” of the patent in question, while the Board treated Singh as prior art under § 102(a), which includes publications or inventions patented “before the invention thereof by the appli- cant.”
In terms of all the discussion about "first to file" in patent reform, there was much discussion about interferences but very little discussion about declarations under Rule 131. These declarations show up in between 0.5 and 1.0% of applications prosecuted. This case involved such a declaration:
In relying on Singh as § 102(a) prior art to support the obviousness rejection, the Board determined that Stepan’s Rule 1.131 Declaration (“Declaration”) was “ineffective to remove Singh as a reference qualifying under 35 U.S.C. § 102(a)” against claims 33–51, 53, and 54. J.A. 15–16. It identified three reasons why the Declaration failed to remove Singh as § 102(a) prior art: (1) it failed to show that “the water content of the catalyst supplied and used prior to March 24, 1997 was unchanged through 2003”; (2) it “failed to address water that might have been present in other reactive components of the claimed resin blend or water that might have been generated by the reaction forming the polyol”; and (3) it appeared “inconsistent with the description of added water vis-à-vis the Dabco K-15 catalyst in the 022 patent.” J.A. 15. Notably, the exam- iner never raised the question whether Singh was § 102(a) prior art, never addressed that argument, never ex- pressed any concerns as to any alleged deficiencies with the Declaration, and never issued a rejection using Singh as § 102(a) prior art.
In this case, the CAFC noted:
In a series of opinions, both this court and our predecessor court, the United States Court of Customs & Patent Appeals (“Patent Court”), have recognized that if the appellant has not had a full and fair opportunity to litigate the Board’s actual basis of rejection, the administra- tive validity proceedings before the United States Patent and Trademark Office (“PTO”) should be allowed to continue. See In re Kumar, 418 F.3d 1361, 1367–68 (Fed. Cir. 2005) (citing numerous Patent Court cases). As this court explained, “the agency must assure that an applicant’s petition is fully and fairly treated at the administrative level.” Id. at 1367.
The rationale of those decisions is that unless the ap- pellant was able to address the merits of the various bases of the Board’s decision, the administrative proceedings before the PTO should be allowed to continue. As the governing regulation states, “[s]hould the Board have knowledge of any grounds not involved in the appeal for rejecting any pending claim, it may . . . [issue] a new ground of rejection.” 37 C.F.R. § 41.50(b). Because the Board is limited to review of the examiner’s decisions during prosecution, the authority to issue a new ground of rejection, and the rights of the applicant that flow therefrom, ensure that the Board can fulfill its notice obligation to the applicant during prosecution.
Part of the CAFC decision evoked images of "Catch 22" or Kafka:
Thus, Stepan had no affirmative obligation to request a rehearing to ask that the Board designate its rejection as a new ground. Indeed, the PTO’s alternative argument is rebutted by the plain text of its own regulation.3
Counsel for PTO admitted at oral argument that § 41.50 is vague as to the applicant’s burden to request rehearing when the applicant believes that the Board has relied on a new ground of rejection without designating it as such. Oral Argument at 26:00–26:23 (“We do admit, however, that the regulation could be more clear about what happens when the Board doesn’t expressly state that something is a new ground of rejection.”).