CAFC on BPAI in LEITHEM: "This conclusory analysis is hardly persuasive"

Within the discussion by the CAFC:

Mere reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of rejection when the Board relies on new facts and rationales not previously raised to the applicant by the examiner. See Kumar, 418 F.3d at 1367- 68. This court’s predecessor long acknowledged the right of the Board to make additional findings of fact based upon the Board’s own knowledge and experience to “fill in the gaps” that might exist in the examiner’s evidentiary showing. See, e.g., In re Ahlert, 424 F.2d 1088, 1091-92 (CCPA 1970); see also In re Moore, 444 F.2d 572, 574-75 (CCPA 1971). But the Board’s power to do so is construed narrowly and when reliance upon such facts changes the thrust of the rejection, the Board’s action “does everything but cry out for an opportunity to respond.” Moore, 444 F.2d at 575; see Ahlert, 424 F.2d at 1091. For example, in Kumar, although the rejection and asserted prior art relied upon by the Board were the same as those relied upon by the examiner, “the Board found facts not found by the examiner regarding the differences between the prior art and the claimed invention, which in fairness required an opportunity for response.” 418 F.3d at 1368; Ahlert, 424 F.2d at 1092 (“These aspects of judicial notice are . . . designed with the purpose in mind of fully utilizing the independent and specialized technical experience of the Patent Office examiners while balancing the appli- cant’s rights to fair notice and an opportunity to be heard.”). This also serves the interests of judicial efficiency. Rather than reviewing arguments directed to- wards ever-shifting rejections, this court is instead only presented with arguments concerning those rejections properly made by the examiner and, in due time, re- viewed by the Board. See 37 C.F.R. § 41.50(b) (“A new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.”).

AND

The subsequent proceedings further solidifies this court’s conclusion that the thrust of the Board’s rejection differed from that of the examiner’s rejection. When Leithem sought rehearing as to whether the Board relied upon a new ground of rejection, the Board shifted its characterization of its earlier rejection. On reconsidera- tion, the Board explained that the examiner viewed Novak as disclosing fluff pulp and, because the Board’s decision “referred to the pulp in the decision, not the wet- laid [paper],” the Board’s initial decision did so as well. Reconsideration at 4. This conclusory analysis is hardly persuasive when nothing in the Board’s initial decision describes the wet-laid paper of Novak as “fluffed”—the precise issue, in fact the only issue, appealed by Leithem.

The bottom line:

The Board cannot play it so fast and loose in affirming an examiner’s rejection that it disregards procedural safeguards afforded to the applicant.

Accordingly, while we express no opinion on the propriety of the Board’s rejection of claim 104, the case must be remanded to the Board to allow appellants a full opportunity to respond to the new rejection in the first instance. The Board’s decision to the contrary was “not in accordance with law,” 5 U.S.C. § 706, and is hereby vacated.


III. CONCLUSION

For the foregoing reasons, this court vacates the Board’s rejections of claim 104 and remands for appropri- ate further proceedings.