An obviousness determination may be called into question if the Board of Patent Appeals and Interferences did not appreciate the full scope of a cited prior art reference.

In re Andrew Chapman and David J. King, No. 2009-1270 (Fed. Cir. Feb. 24, 2010)

An Examiner rejected several claims of a pending patent application under 35 U.S.C. § 103(a) as obvious over a primary reference in view of a secondary reference. The Applicant appealed the Examiner’s rejection to the Board of Patent Appeals and Interferences. In analyzing the Examiner’s rejections, the Board adopted a number of factual findings concerning the scope of the primary reference. The Board ultimately agreed with and affirmed the Examiner’s findings and legal conclusions with respect to the obviousness of the Applicant’s claims over the cited references.

On appeal, the Applicant contended that the Board erred as a matter of law in finding the claims at issue obvious in view of the cited prior art. Specifically, both parties agreed that the sole question on appeal was the accuracy of the Board’s description and factual findings of the primary reference. The government acknowledged that the Board’s opinion included three erroneous statements, but urged that the errors were harmless.

In reviewing the Board’s decision, the Federal Circuit stated that the Applicant had the burden to not only show the existence of error, but also show that the error was harmful because it affected the decision below. While the government argued that the errors were harmless, the Federal Circuit concluded that these errors were harmful because they increased the likelihood that the Applicant was denied a patent on grounds of obviousness. Further, the court found that if the Board based its decision on a misunderstanding of the primary reference, its subsequent conclusions regarding obviousness are called into question. If the Board did not appreciate the full scope of the primary reference, the Federal Circuit could not be confident about its ultimate conclusion in the absence of these errors. Therefore, the court was persuaded that the errors were indeed harmful.

The court remanded the case back to the Board and advised that the conclusion of obviousness be reevaluated in light of a corrected understanding of the primary reference. However, the court reminded the Board that it was in no way precluded from finding the claims obvious.

A copy of the opinion can be found here.