The Federal Circuit recently issued a decision on an appeal from the Patent Trial and Appeal Board where the central question was whether the Board and the examiner properly relied on the same articulated reasoning and factual underpinnings in rejecting a claim, or whether instead the Board made new findings and adopted different reasons to support a new ground of rejection, thus depriving the applicant of both notice and an opportunity to respond. See In re Lutz Biedermann.

Lutz Biedermann and Jurgen Harms (collectively “Biedermann”) appealed a decision of the Board affirming the rejection of claims 32, 33, 35–37, 39, and 48 of U.S. Patent Application No. 10/306,057 (“’057 Application”) for obviousness, 35 U.S.C. § 103(a). Ultimately, the Federal Circuit, per Judge Linn (with Judges Moore and O’Malley agreeing), determined that the Board rejection did constitute a new grounds of rejection. Thus, the Board’s decision was vacated and remanded for further proceedings.

Representative Claim

Claim 32 of the ’057 Application recites:

32. A holding device comprising:

a shank portion;

a holding portion connected to the shank portion for holding a rod; and

a locking element to lock the rod in the holding portion;

wherein the holding portion comprises a recess on one end having a U-shaped cross-section and two open legs for receiving the rod, and an inner thread on the open legs;

wherein the locking element comprises an outer thread having two flanks, the outer thread cooperating with the inner thread, one of the two flanks of the outer thread facing the one end of the holding portion and the other of the two flanks of the outer thread facing away from the one end of the holding portion; and

wherein the inner thread comprises two flanks, one of the two flanks of the inner thread facing the one end of the holding portion and the other of the two flanks of the inner thread facing away from the one end of the holding portion, each of the two flanks of the inner thread enclos- ing an angle of 90° with a central axis (M) of the holding portion;

wherein a crest of the outer thread of the lock- ing element is spaced from a root of the inner thread when the locking element is tightened such that an axial force acts on the holding device to prevent the legs from splaying.

Examiner Rejections

The examiner rejected claims 32, 33, 35–37, 39, and 48 of the ’057 Application as being unpatentable over U.S. Patents No. 5,005,562 (“Cotrel”) and No. 4,846,614 (“Steinbock”) further in view of U.S. Patent No. 4,688,832 (“Ortloff”) under 35 U.S.C. § 103(a).

Cotrel discloses a bone screw with a shank, a holding portion with internally threaded legs, and a locking element or screw to hold a rod. Steinbock discloses a machining arrangement for moving heavy loads. The examiner completed this obviousness rejection relying on the Ortloff reference for its disclosure of gaps or clearances between the crest of the outer thread and the root of the inner thread. The examiner also noted that this feature would be inherent in a device combining Cotrel and Steinbock.

At the Board

In analyzing the propriety of the examiner’s rejection, the Board discussed the threads shown in Cotrel and Steinbock and also made reference, for the first time, to Erik Oberg et al., Machinery’s Handbook (Christopher J. McCauley et al. eds., 26th ed. 2000). The Board did not reach Ortloff and instead relied on the examiner’s alternative inherency rationale with respect to the gap. Further, the Board did not rely on the examiner’s view relative to minimal improved efficiency that would be realized by Cotrel, but instead that the buttress threadforms would at least suggest interchangeability.

Biedermann requested rehearing, arguing that the Board issued a new ground of rejection by relying on “interchangeability” instead of “efficiency” and by referring to the Machinery’s Handbook.  The Board denied Biedermann’s request.

Federal Circuit

Judge Linn started off analyzing whether the issue of whether there is a new ground of rejection is a question of law deserving de novo review. He then went on to explain that when considering whether the Board issued a new ground of rejection, the determining factor is whether the applicants have had fair opportunity to react to the rejection. While it is not necessary for the Board to recite and agree with the examiner’s rejection in haec verba (i.e., using the exact language) to avoid a finding that there is a new ground of rejection, the mere reliance on the same statutory basis and the same prior art references is insufficient if the Board relies on new facts and rationales not previously raised by the examiner.

Here, the Federal Circuit decided that the rationale used by the examiner was different from the rationale used by the Board, and thus amounted to a new ground of rejection. The Federal Circuit explained:

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 saw-tooth 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.

With respect to the Machinery’s Handbook, Judge Linn explained that the citation of a new reference will be a new ground of rejection unless such a reference is a standard work, cited only to support a fact judicially noticed and the fact so noticed plays only a minor role. In other words, a new reference will constitute a new ground of rejection unless it merely serves to fill in the gaps that might exist in the evidentiary showing made by the Examiner to support a particular ground for rejection.

Rather than the Machinery’s Handbook playing a minor role, Judge Linn held it played a major role.

Tags: judge linn, new ground of rejection, patent, patents, PTAB, USPTO

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