Digest of IN RE: HILL-ROM SERVS., INC., No. 2015-1305 (Fed. Cir. Dec. 2, 2015) (nonprecedential). On appeal from the P.T.A.B. Before O’Malley, Plager and Bryson.
Procedural Posture: Patentee appealed the Board’s decision in an ex parte reexamination proceeding that various claims are invalid as obvious. The Federal Circuit affirmed.
- Obviousness—Motivation to combine: The Board correctly upheld the Examiner’s rejection of the claims in view of the combination of two prior art references. Rejecting the patentee’s argument of lack of motivation to combine, the Federal Circuit concluded that the examiner had a sufficient basis to find that a skilled worker would have had a reason to apply the peer-to-peer network of one reference, due to its greater reliability and processing speeds, to the hospital bed of a second reference.
- Obviousness—Person of ordinary skill in the art: The Board correctly affirmed the examiner’s determination that a person of ordinary skill in the art would have been able to adapt the peer-to-peer network of the first reference to the hospital bed of the second reference. Given the similarity of the systems disclosed in the two references, it was reasonable for the examiner and Board to conclude that adapting the peer-to-peer network to the hospital bed was within the capacity of a person of ordinary skill at the time of the invention.
- Obviousness: The Board’s reference to the electrical network of the second reference by the disputed term “communication network” does not affect the obviousness analysis. The Board concluded that the combination of the two references rendered the claims obvious regardless of whether the electrical network of the second reference is a “communication network.” The disclosed electrical network “has to be assessed for what it is, not for what it is called.”
- Waiver: By failing to file a petition for rehearing with the Board, the patentee waived its argument that the Board’s decision that the claims would have been obvious—even if the electrical network of the second reference was not considered a “communication network”—constituted a new ground of rejection. The PTO’s regulation requiring exhaustion of “new ground of rejection” claims is not an unlawful restriction of Article III jurisdiction. Failure to file a timely request for rehearing, according to the regulation, constitutes a waiver of “new ground of rejection” argument.