The U.S. Court of Appeals for the Federal Circuit affirmed the United States Patent and Trademark Office Board of Patent Appeals and Interferences’ (the Board’s) rejection of all claims in a patent application based on obviousness, stating that it would not overturn a decision simply because the Board found one way when it could have plausibly found in the alternative. In re Stauffer, Case No. 07-1445 (Fed. Cir., July 24, 2008) (Ward J.).

David W. Stauffer and Joseph P. Hoffbeck (collectively SEI) filed an application generally directed to a device for printing caller ID information associated with a telephone call without user intervention. SEI claimed the invention was an improvement over the prior art because the message taker only needed to use the printed call records to record relevant message information quickly and easily.

The examiner rejected the claims based on three prior art references. SEI appealed the rejection to the Board. On September 25, 2006, the Board affirmed the examiner’s final rejection of the claims as obvious in view of prior art. On March 30, 2007, in a decision on request for rehearing, the Board declined to modify the decision on appeal. SEI appealed to the Federal Circuit.

The Court reviewed the Board’s legal determination without deference and the underlying factual findings for substantial evidence, which is any evidence that a reasonable person might accept as adequate to support a conclusion. The Court noted that, where two different inconsistent conclusions may reasonably be drawn from evidence in the record, an agency’s decision to favor one conclusion over the other is the epitome of a decision that must be sustained upon review for substantial evidence. The Court found there was substantial evidence to support the Board’s ruling that the application was obvious in view of the prior art. Therefore, the Court determined that it would not overturn a plausible conclusion by the Board simply because the Board could have arrived at an alternative conclusion.

Practice Note: Under 35 U.S.C. §145, an applicant dissatisfied with the decision of the Board in an appeal may seek remedy by civil action against the Director of the U.S. Patent and Trademark Office (USPTO) in the United States District Court for the District of Columbia. The district court may determine that the applicant is entitled to a patent. An action under §145 allows the applicant to present additional evidence and bolster the record. Thus, this may be an avenue to consider before an appeal to the Federal Circuit.