The USPTO’s final Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals includes new rules relating to new grounds of rejection on appeal, and new guidance on what constitutes a “new” ground of rejection in an Examiner’s Answer. Although the new rules only apply to cases in which a Notice of Appeal is filed on or after January 23, 2012, the guidance is based on older Federal Circuit and CCPA decisions (and in accord with the recent Federal Circuit decisions in In Re Leithem, In Re Stepan Co. and cases cited therein) and so should be applicable now.
Barely two weeks after vacating the decision of the USPTO Board of Patent Appeals and Interferences in In re Leithem as being based on a new ground of rejection, the Federal Circuit took similar action in In Re Stepan Co. While the Board in Leithem had relied on different characterizations of the cited prior art references, the Board in Stepan had discredited a Rule 1.131 Declaration that the Examiner had not questioned on the merits. Hopefully the Board will take these decisions seriously and reverse examiner rejections it finds inadequate instead of trying to reformulate them on appeal.
The recent Federal Circuit decision in In re Leithem highlights what some practitioners believe is a growing problem with decisions from the USPTO Board of Patent Appeals and Interferences: the Board’s practice of “affirming” a rejection based on a new ground of rejection. The court soundly criticized this practice when it vacated and remanded the Board decision “to allow appellants a full opportunity to respond to the new rejection.”