CAFC on Acco Brands v. Fellowes

The outcome:


This case arises from an inter partes reexamination
that ACCO Brands Corporation (ACCO) sought—and the
Patent and Trademark Office instituted—against a patent
owned by Fellowes, Inc. (Fellowes). After the examiner
rejected four claims on obviousness grounds,
Fellowes appealed to the Patent Trial and Appeal Board
(Board). The Board reversed the rejections, finding that
the examiner had failed to make a prima facie showing of
obviousness. We reverse this finding and hold that the
examiner made this prima facie showing. We remand the
Board’s decision so it may further consider two issues that
it did not reach below: (1) whether Fellowes’ rebuttal
evidence changes the outcome on obviousness and (2)
whether the dependent claims at issue provide independent
grounds of nonobviousness.



The conclusion


We reverse the Board’s determination that the examiner
did not set forth a prima facie case of obviousness.
Based on the Board’s finding of no prima facie case as to
claims 9 and 11, it appropriately declined to reach (1) the
examiner’s prima facie evidence that claims 10 and 12 are
obvious and (2) Fellowes’ rebuttal evidence. We decline to
take either category of evidence up for the first time on
appeal and instead remand this case to the Board so that
it may consider these two issues.