No. 2010-1019 (Fed. Cir. Mar. 28, 2011).

The PTO’s burden of production is satisfied by meeting the requirements of Section 132 to notify the applicant of the reasons for the rejection and the identification of the references relied upon for the rejection.

The applicants filed an “application directed to a photo-detector array system for transforming light inputs into electrical signals.” The examiner rejected the application as anticipated by a prior art patent and cited the column and line number of the patent identifying each limitation in the claims of the application. In response, the applicants amended their claims and argued that their claims were “different” from prior art patent. The response, however, did not explain how the claims were different and the examiner issued a final rejection. The applicants appealed to the Board of Patent Appeals and Interferences, and the Board affirmed the examiner’s rejection. The applicants then appealed to the Federal Circuit, which also affirmed.

The applicants argued that the examiner had not made a proper prima facie case of anticipation. In particular, the applicants alleged that the examiner had failed to provide a proper claim construction. The Federal Circuit rejected this argument. As an initial matter, “the prima facie case is merely a procedural device that enables an appropriate shift of the burden of production.” To satisfy its burden, the PTO need only comply with Section 132’s requirement that it notify the applicant of the reasons for the rejection and the identification of the references relied on for the rejection. In this case, the examiner satisfied this requirement by identifying that the application was rejected as anticipated by the prior art patent and citing the portions of that patent.

The court also rejected the applicants’ contention that the Board inappropriately framed the issue and improperly made additional factual findings. The court rejected the issue framing argument because the examiner had properly complied with Section 132. As for making additional factual findings, the court noted that these findings were directly from the application and the references, and were substantially similar to the examiner’s findings. Hence, there was nothing improper. In any event, “[i]t is well-established that the Board is free to affirm an examiner’s rejection so long as appellants have had a fair opportunity to react to the thrust of the rejection.” Here, the Federal Circuit found that the applicants had a fair opportunity to respond to the rejection.

A copy of the opinion can be found here.