CAFC in Q.I. Press: an obligation is owed to the public not to permit inconsistent results when a proper challenge to that inconsistency is made on appeal

from within the decision of Q.I. Press vs. Lee and Quad/Tech

as to obviousness


“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. In assessing this question, assessment of proffered evidence of non-obviousness must be part of the inquiry, even in the reexamination context. Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1357–58 (Fed. Cir. 2013). That is the case here.



BUT


Although these objective indicia of non-obviousness are relevant to, and must be factored into our analysis, that evidence does not alter the conclusion that, upon consid- eration of all relevant evidence, claims 61–72 of the ’423 patent were invalid as obvious over Sainio in view of Ross. The Board thus did not err in reaching that conclusion.



As to written description


We agree with the Director that the figures of the ’423 patent do not show the substrate unsupported at the point of illumination as required by claim 18. Whether a claimed invention is supported by an adequate written description is a question of fact, Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc), which we review for substantial evidence, Shu-Hui Chen v. Bouchard, 347 F.3d 1299, 1304–05 (Fed. Cir. 2003). The written description is a statutory requirement set forth in 35 U.S.C. § 112. The test for written descrip- tion is that it “must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Ariad, 598 F.3d at 1351 (citation and quota- tions omitted). The disclosure must “convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id.



AND


Concerning the argument that the Board erred in re- versing the rejection of claims 13–60 because those claims improperly expand the scope of the ’423 patent in viola- tion of 35 U.S.C. § 305, we agree with Quad/Tech that the argument was not presented before the Board and is thus waived. See In re Baxter Int’l, Inc., 678 F.3d 1357, 1362 (Fed. Cir. 2012) (“Absent exceptional circumstances . . . we generally do not consider arguments that the appli- cant failed to present to the Board.” (citing In re Watts, 354 F.3d 1362, 1367–68 (Fed. Cir. 2004)).
Regarding the obviousness of claims 1–60, however, those claims differ only slightly from claims 61–72, the rejection of which we have above affirmed.



Of new ground of rejection


We are cognizant of the fact that the Board perhaps did not sua sponte reject claims 1–60 for obviousness over Sainio in view of Ross because that rejection would have constituted a new ground for rejection on appeal. See Rambus Inc. v. Rea, 731 F.3d 1248, 1255 (Fed. Cir. 2013) (“The Board may not ‘rel[y] on new facts and rationales not previously raised to the applicant by the examiner.’” (quoting In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011)); see also Leithem, 661 F.3d at 1319 (stating that even “reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of rejection when the Board relies on new facts and rationales not previously raised to the applicant by the examiner”).
However, the Board has the discretion to issue a new ground of rejection if it has knowledge of one. 37 C.F.R. § 41.77(b) (“[S]hould the Board have knowledge of any grounds not raised in the appeal for rejecting any pending claim, it may include in its opinion a statement to that effect with its reasons for so holding, which statement shall constitute a new ground of rejection of the claim.”). In those instances, the “Board must designate its decision a new ground of rejection and provide the appellant with an opportunity to respond.” Rambus, 731 F.3d at 1256
(citing In re Stepan Co., 660 F.3d 1341, 1344 (Fed. Cir. 2011); 37 C.F.R. § 41.77(b)); see also Stepan, 660 F.3d at 1343 (“[I]f the appellant has not had a full and fair oppor- tunity to litigate the Board’s actual basis of rejection, the administrative validity proceedings before the [PTO] should be allowed to continue.” (citing In re Kumar, 418 F.3d 1361, 1367–68 (Fed. Cir. 2005)). If a new ground of rejection is included in the opinion, the patentee then has the option to either reopen prosecution before the examin- er or request rehearing. 37 C.F.R. § 41.77(b).
Here, when all these references were before the Board, and this court, an obligation is owed to the public not to permit inconsistent results when a proper challenge to that inconsistency is made on appeal. The Board should have observed the similarities between the claims, noted those similarities between the claims and the references before the Board on appeal, analyzed whether the combination of Sainio and Ross would have rendered claims 1–60 obvious, and if so, issued a new ground of rejection. The combination of Sainio and Ross was before the Board on appeal because those references were cited by the examiner to invalidate claims 61–72. And, given the minor differences between the claims, the Board “[had] knowledge of . . . grounds not raised in the appeal for rejecting [claims 1–60].” Id. We do not hold that the Board should always apply references that are before it affecting some claims to every other claim on appeal, but we do find that in this instance, in which nearly identical claims were found both valid and invalid due to similar combinations of prior art resulting in a Board opinion that was seemingly inconsistent, the Board erred by not con- sidering the combination of Sainio and Ross as a new ground for rejection of claims 1–60. Accordingly, we vacate the Board’s decision to the extent that it holds that claims 1–60 would not have been obvious and remand that portion of the case for further proceedings consistent with this opinion.