Patent Law Practice Center

CAFC Vacates PTAB Because of New Ground of Rejection

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.

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