In a precedential decision, the Board of Patent Appeals and Interferences (the Board) clarified that on appeal the Board reviews particular findings contested by an appellant anew in light of all the evidence and argument on that issue. The Board also clarified that de novo review is limited to those issues contested by the appellant and that the Board as a general matter does not, take on itself to unilaterally review uncontested aspects of the rejection. Ex Parte Frye, Appeal No. 09-006013 (BPAI, Feb. 26, 2010).
The appellant’s claims directed to a shoe having a forwardly-inclined, reverse wedge required that “the rear heel section of the insole and the forward toe section of the insole meet at a point substantially halfway with respect to the upper surface.” (Emphasis added.) The appellant asserted that the examiner erred in rejecting several claims as anticipated under 35 U.S.C. § 102(b) by a prior art patent. The examiner found that the prior art discloses an insole with the claimed shape. The examiner further found that the location where the rear heel section and the forward toe section meet appeared to be the same location as shown in appellant’s drawings and deemed to be “substantially halfway.” The appellant contended that the location at which a prior art shoe (Snabb’s) insole transitions from a section having a rearwardly decreasing thickness to a section having a constant thickness would never be considered to be at a halfway point of the shoe.
In reviewing the issue, the Board clarified that, on appeal, the examiner’s findings are given no deference. The Board, however, noted that it does not as a general matter review the examiner’s findings that are not specifically challenged on appeal. Here, the Board agreed with the appellant that the examiner’s finding that Snabb discloses a meeting point located “substantially halfway” with respect to the upper surface of the shoe as recited in the claims rests on an unreasonably broad interpretation of “substantially halfway.” The Board noted that the meaning of substantially includes “reasonably close to: nearly, almost, about.” Accordingly, the Board reversed the examiner’s rejection—finding that the examiner had interpreted the prior art in a manner that was “unreasonably broad.”
Practice Note: The Board opinion is also notable because its signatories include the U.S. Patent and Trademark Office’s (USPTO’s) Director David Kappos, who is a statutory member of the Board under 35 U.S.C. §6(a). In a post devoted to Frye on his public blog, Kappos lauds the decision for “preserving a complete de novo review on the one hand, while not diverting Board effort into issues not raised by the appellant on the other hand, preserves the right balance between thorough review and administrative efficiency.” (See http://www.uspto.gov/blog/director/entry/ex_parte_frye_bpai_s for Kappos’ full comments.)