RUDOLPH TECHNOLOGIES v. CAMTEK: Dec. 22, 2016. Before Newman, Reyna (dissent-in-part), and Stoll, per curiam. (non-precedential)

The Takeaway:

  • Where a patent and prior art reflect the appropriate level of skill, and it is not an issue presented by the parties, an absence of specific findings on the level of skill in the art does not give rise to reversible error.
  • The procedural requirements for reaching a final agency determination on newly rejected claims are required prior to appeal.

Procedural Posture:

On appeal from the PTAB’s decision in an inter partes reexamination rejecting claims as obvious, the CAFC reversed the Board’s rejection of claims 9-11 and affirmed the Board’s rejection of the other claims.

Analysis:

  • Obviousness: Rudolph owns a patent which uses high-resolution imaging to inspect the quality of substrates used to fabricate computer chips. The CAFC reversed the Board’s rejection of claim 9 as obvious because there was no evidentiary support for the conclusion that the prior art’s die-to-die database comparison taught the claimed training of a model developed from multiple known good substrates to one of ordinary skill at the time. The CAFC affirmed the Board’s rejection of claims 1 and 14 as obvious on the record evidence. A determination of the level of ordinary skill in the art was not at issue, and an absence of specific findings on the level of skill in the art by the Board does not give rise to reversible error where the patent and prior art reflect the appropriate level of skill.
  • PTAB procedures: On appeal, Rudolph sought review of the non-final rejection of claims 30-34 and 36 as obvious because those claims were rejected for the same reasons as the other claims, and Rudolf did not intend to seek to amend or submit new evidence to the Board. The CAFC found that it did not have jurisdiction to review the rejection of those claims because it was not a final agency determination, and not seeking to amend or present new evidence does not absolve the procedural requirements for appealing newly rejected claims. Furthermore, the Board placed Rudolph on clear, express notice that upon receiving a rejection on new grounds, Rudolph would be required to either reopen prosecution or request rehearing to exhaust administrative remedies prior to judicial review.
  • Other opinions: Judge Reyna dissented from the majority’s decision to reverse the rejection of claim 9 as obvious. He argued that the majority misapplied the deferential standard of substantial evidence by requiring express statements about how an ordinarily skilled artisan would interpret the prior art.