Finding that the Board of Patent Appeals and Interferences (Board) may have misunderstood the claim limitations, the U.S. Court of Appeals for the Federal Circuit reversed claim rejections applying the substantial evidence test. The Court also found that based on the date of the mailing of Board decision, the appeal was timely, notwithstanding the date of the Board’s decision. In re McNeil-PPC, Inc., Case No. 08-1546 (Fed. Cir., July 31, 2009) (Michel, C. J.) (Dyk, J., dissenting).

The patent is for a tampon for feminine hygiene made of absorbent material with a solid fiber core and radially projecting ribs. As claimed, the fiber core is denser than the ribs. The less dense ribs have a coarser capillary structure than the fiber core. Also, the ribs are narrower at their base where they join the core than at their distal ends.

Patent owner McNeil asked the U.S. Patent and Trademark Office (USPTO) to reexamine its patent in view of an unexamined Japanese application (Sasaki). The examiner rejected the claims for anticipation and obviousness. The Board affirmed the examiner’s rejections. The Board found that “Sasaki reasonably appears to depict a tampon having a generally cylindrical absorbent portion with a generally cylindrical compressed solid fiber core from which longitudinal ribs extent radially outward.” The Board also found that Sasaki disclosed “a tampon wherein each of the ribs is compressed less than the fiber core, thereby having a coarser capillary structure than the fiber core.”

After receiving the appeal, the Federal Circuit issued an order to show cause why the appeal should not be dismissed for lack of jurisdiction. The issue turned on whether the Board “decided” McNeil’s motion for reconsideration on May 30 or June 2. The Board’s opinion states “Decided: May 30, 2008.” The Federal Circuit nonetheless held that the Board issued its decision on the date indicated on the order’s mailing sheet, June 2, 2008, which made the appeal timely. McNeil presented a declaration from a retired member of the Board who stated that the time to respond to the USPTO was historically triggered by the date of mailing. The USPTO did not challenge any of the factual assertions in the declaration or provide alternative explanations. Judge Dyk dissented on the grounds that the appeal was too late and beyond the Court’s jurisdiction.

On the merits of the anticipation rejection, the Federal Circuit held that the Board’s findings were not supported by substantial evidence. The Court found no substantial evidence that Sasaki disclosed a tampon with a “core” at all. Moreover, there was no evidence that Sasaki disclosed ribs that were compressed less than the fiber core. Moreover, the Sasaki patent did not disclose anything regarding relative coarseness of different portions of the tampon. The Court mused whether the Board actually understood the claims and reversed the claim rejections for anticipation and obviousness.