Tag Archives: New Ground of Rejection

Federal Circuit Finds New Rationale Constituted New Ground Of Rejection On Appeal

A unanimous panel of the Federal Circuit has found that yet another decision by the USPTO Patent Trial and Appeal Board (PTAB) improperly made a new ground of rejection in “affirming” the examiner’s rejections. The court’s decision in In re Biedermann follows similar rulings in Rambus, Stepham, and Leithem, and raises questions as to whether the … Continue reading this entry

Federal Circuit Vacates PTAB Decision Invalidating Rambus Patent

In Rambus, Inc. v. Rea, the Federal Circuit found several legal and procedural errors in the decision of the USPTO Patent Trial and Appeal Board (PTAB) that invalidated certain claims of the Rambus patent as obvious. While the technology at issue goes beyond the scope of PharmaPatentsBlog, the decision makes several important points of general … Continue reading this entry

New Explanation By Patent Trial And Appeal Board Is Not A New Ground Of Rejection

In In re Adler, the Federal Circuit affirmed the decision of the Patent Trial and Appeal Board (PTAB) that upheld the Examiner’s determination that the claims at issue were obvious. In so doing, the court rejected Adler’s arguments that the PTAB decision was based on a new ground of rejection that would have entitled Adler … Continue reading this entry

USPTO Issues New Guidance On New Rejections On Appeal

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 … Continue reading this entry

Another Board Affirmance Found To Improperly Rely On A New Ground Of Rejection

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, … Continue reading this entry

Federal Circuit Vacates Board Affirmance Found To Rely On New Ground Of Rejection

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 … Continue reading this entry

USPTO Proposes To Simplify Patent Appeal Practice

The USPTO has published proposed changes to the rules governing practice before the Board of Patent Appeals and Interferences. While the proposed changes salvage a few elements from the 2008 "Final Rules" that never took effect, the USPTO plans to rescind that rules package. In its place, the USPTO has proposed a rules package that appears to … Continue reading this entry