CAFC addressed notice issue in Nike v. Adidas

The outcome:


This case requires this court to once again consider the
notice provisions of the Administrative Procedure Act.
Nike, Inc. appeals the Patent Trial and Appeal Board’s decision on remand denying its request to enter substitute
claims 47–50 of U.S. Patent No. 7,347,011 on the ground
that those claims are unpatentable under 35 U.S.C. § 103.
Specifically, Nike asserts that the Board violated the notice
provisions of the APA by finding that a limitation of substitute claim 49 was well-known in the art based on a prior
art reference that, while in the record, was never cited by
adidas AG (“Adidas”) for disclosing that limitation. Nike
also challenges the Board’s finding that Nike’s evidence of
long-felt but unmet need was insufficient to establish the
nonobviousness of substitute claims 47–50. We conclude
that substantial evidence supports the Board’s finding that
Nike failed to establish a long-felt need for substitute
claims 47–50. Because no notice was provided for the
Board’s theory of unpatentability for substitute claim 49,
however, we vacate the Board’s decision as to substitute
claim 49 and remand for the Board to determine whether
that claim is unpatentable as obvious after providing the
parties with an opportunity to respond.



Nike lost on long felt but unmet need:


Accordingly, we affirm the Board’s determination that
Nike’s arguments and evidence failed to demonstrate a
long-felt but unmet need for substitute claims 47–50.