Case: In Re Lutz Biedermann, No. 2013-1080 (Fed. Cir. Oct. 18, 2013) (precedential). On appeal from the Patent Trial and Appeal Board. Before Moore, Linn, and O’Malley.

Procedural Posture: Patent applicant appealed from decision of the Board of Patent Appeals and Interferences, now the Patent Trial and Appeal Board, denying applicant’s request for a rehearing to address applicant’s claim that the BPAI’s initial decision affirming the Examiner’s rejection introduced a new ground for rejection. CAFC vacated the BPAI’s denial of the rehearing and remanded for further proceedings.

  • BPAI Appeals: The BPAI’s obviousness rejection was a new ground because it provided a different principle reason for combining the cited obviousness references than the reasoning provided by the Examiner. Rather than providing additional details in support of the Examiner’s rejection, the thrust of the rejection was new because the BPAI applied a new factual basis to combine the references and left it unclear whether any of the Examiner’s initial reasons supporting a motivation to combine the references remained. Further, the BPAI issued a second new ground when its rejection included a new reference because citation to a new reference is considered new ground for rejection unless the citation is to a standard work reference and used to support a judicially noticed fact that plays a minor role filling in gaps in the evidentiary showing made by the Examiner. Because the BPAI issued two new grounds of rejection, applicant was entitled to a rehearing before the BPAI or to reopen prosecution.