In rejecting a patent as invalid during reexamination, the Board of Patent Appeals’ reliance on the same type of rejection or the same prior art references relied upon by the examiner, alone, is insufficient to avoid a new ground of rejection where it propounds new facts and rationales to advance a rejection – none of which were previously raised by the examiner.

During reexamination proceedings, the Patent and Trademark Office (“PTO”) examiner rejected a patent as invalid as anticipated under 35 U.S.C. § 102(b) or, alternatively, obvious under 35 U.S.C. § 103(a).  On appeal, the Board of Patent Appeals and Interferences (“Board”) affirmed  the examiner’s rejection.  Because the Board relied on a new ground in affirming the examiner’s rejection, the Court vacated and remanded.

In affirming the examiner’s rejection, the Board relied on identical prior art references to the examiner.  However, the examiner found that the main prior art reference was 102(b) prior art, whereas the Board found that the same prior art reference was 102(a) prior art.  In addition, the Board identified and relied upon deficiencies in a declaration previously submitted by the patentee in the reexamination proceedings, though the examiner had never expressed similar concerns.  The Board did not classify its affirmation of the examiner’s rejection as a new ground, and therefore the patentee was precluded from further administrative proceedings.

The patentee argued that the Board sustained the examiner’s obviousness rejection on a new ground and, because the Board did not identify its rejection as a new ground, the patentee’s administrative due process rights were violated.  The PTO responded that the Board’s decision was not a new ground for rejection because the thrust of the rejection was the same – obviousness – and because the patentee failed to request a rehearing as required by regulation.

The Court rejected the PTO’s arguments, finding that the Board relied on a new ground of rejection by making and relying on new fact findings regarding an issue the examiner did not raise, namely, the sufficiency of the patentee’s declaration.   “Mere reliance by the Board on the same type of rejection or the same prior art references relied upon by the examiner, alone, is insufficient to avoid a new ground of rejection where it propounds new facts and rationales to advance a rejection – none of which were previously raised by the examiner.”

In addition, the Court found that the patentee did not have an obligation to seek a rehearing because the PTO’s regulatory interpretation was inconsistent with its obligations under the Administrative Procedure Act, and because the PTO’s argument was rebutted by the plain text of its own regulation.

A copy of the opinion can be found here.