Appellant BIEDERMANN prevails over PTAB at CAFC

The appellant, represented by Kirkland & Ellis, , prevailed at the CAFC against the Board, in the case In re BIEDERMANN



The central question in the present case is whether
the Board and the examiner properly relied on the same
articulated reasoning and factual underpinnings in rejecting
Biedermann’s claims or whether the Board made new
findings and adopted different reasons to support a new
ground of rejection, thus depriving Biedermann of both
notice and an opportunity to respond.




Of law


The Patent and Trademark Office (“PTO”) is subject
to the Administrative Procedure Act (“APA”). See Dickinson
v. Zurko, 527 U.S. 150, 154 (1999). Under the APA,
the PTO “must assure that an applicant’s petition is fully
and fairly treated at the administrative level.” In re
Kumar, 418 F.3d 1361, 1367 (Fed. Cir. 2005). The APA
requires the PTO “to provide prior notice to the applicant
of all ‘matters of fact and law asserted’ prior to an appeal
hearing before the Board.” Stepan, 660 F.3d at 1345
(quoting 5 U.S.C. § 554(b)(3)); see also In re Leithem, 661
F.3d 1316, 1319 (Fed. Cir. 2011) (“Under the [APA], an
applicant for a patent who appeals a rejection to the
Board is entitled to notice of the factual and legal bases
upon which the rejection was based.” (citing 5 U.S.C.
§ 554(b)(3))).



Here


Here, the examiner’s reasoning in support of combining
the square thread of Steinbock with the device of
Cotrel was that there were a limited number of threads
that could be used and that a square thread was the most
efficient. While the examiner in the Examiner’s Answer
made a passing reference to splaying in relation to the
gaps between the inner and outer threads, the examiner’s
rejection neither relied upon nor even noted the avoidance
of splaying as a factor. The Board, on the other hand,
found new facts as the basis for concluding that the
combination of Cotrel and Steinbock would have been
obvious: that Cotrel teaches avoiding splaying with sawtooth
threads; that saw-tooth threads are buttress
threads; that Steinbock groups together the square
threads and buttress threads; and that square threads
avoid splaying. The principal reason the examiner combined
the references was the efficiency of a square thread.
The principal reason the Board affirmed the combination
of the references was the avoidance of splaying by using
square threads. These are different grounds and form the
bases or underpinnings of different rejections. Even the
Board itself recognized that efficiency and avoiding splaying
were different. Decision on Rehearing, at *1. This is
analogous to Leithem in which the Board distinguished
fluffed pulp from pulp that could be fluffed. See 661 F.3d
at 1318, 1320.



Also


The Board’s treatment of machinability in the Decision
on Appeal was also a new ground of rejection. The
Board treated machinability as another factor, in addition
to efficiency, that one of ordinary skill would consider in
selecting a threadform, making it part of the reason to
combine the references. See Decision on Appeal, at *2.
Identifying machinability as an additional reason to
combine does not mean that it is not a new ground of
rejection. See In re Waymouth, 486 F.2d 1058, 1061
(CCPA 1973) (“To attempt to deny appellants an opportunity
to provide a different and appropriate response to
the board’s rejection by saying that the board merely
advanced ‘an additional reason’ for affirming the examiner
begs the question and does not satisfy the administrative
due process . . . .”), modified, 489 F.2d 1297 (CCPA
1974). There is no apparent connection between machinability
and the examiner’s reason to combine based on
efficiency.



Bottom line



For the foregoing reasons, this court vacates the
Board’s decision and remands for further proceedings.