10/18/13

In re Biedermann: No Altering Obviousness Grounds, Introducing New References during Appeal


 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleIn re Biedermann, No. 2013-1080 (Fed. Cir. Oct. 18, 2013).
IssuesThe central question in the present case is whether the Board and the examiner properly relied on the same articulated reasoning and factual underpinnings in rejecting Biedermann’s claims or whether the Board made new findings and adopted different reasons to support a new ground of rejection, thus depriving Biedermann of both notice and an opportunity to respond [by: [1] relying on an “interchangeability” obviousness finding instead of the examiner's “efficiency”
obviousness finding; [2] introducing a Machinery’s Handbook reference; and [3] not considering negative teachings of a reference concerning machinability].
In re Biedermann at *11 (text added).
Holdings[1] The thrust of the rejection changed when the Board found a new factual basis for the reason to combine [when it altered a combination premised on the efficiency of a square thread to a combination premised on 'avoidance of splaying' by using an interchangeable square thread]. The Board went beyond filling in gaps in the examiner’s reasoning because it is not clear that the examiner’s reasoning survived in the Board’s rejection. Unlike Jung, there is no indication that the Board was merely explaining the examiner’s rejection.
In re Biedermann at *15.
[2] [T]he Board used the Machinery’s Handbook to associate buttress and saw-tooth threads. [...] [T]he association between saw-tooth and buttress threads played an important role, not a minor role, in the Board’s new reasoning by providing the link to associate Cotrel’s threads with one of the threadforms grouped in Steinbock. The Machinery’s Handbook, thus, was used as part of the new ground of rejection.
Id. at *16.
[3] There is no apparent connection between machinability and the examiner’s reason to combine based on efficiency [because it was introduced merely as an additional grounds for combination].
Id. at *17 (text added).
 
Procedural HistoryLutz Biedermann and Jurgen Harms (collectively “Biedermann”) appeal a decision of the Board of Patent Appeals and Interferences (“Board”), now the Patent Trial and Appeal Board, affirming the rejection of claims 32, 33, 35–37 37, 39, and 48 of U.S. Patent Application No. 10/306,057 (“’057 Application”) for obviousness, 35 U.S.C. § 103(a).
In re Biedermann at *2.
 
 
 
 
Legal Reasoning (Moore, Linn, O'Malley)
Background
APA Notice Requirements, generallyThe Patent and Trademark Office (“PTO”) is subject to the Administrative Procedure Act (“APA”). See Dickinson v. Zurko, 527 U.S. 150, 154 (1999). Under the APA, the PTO “must assure that an applicant’s petition is fully and fairly treated at the administrative level.” In re Kumar, 418 F.3d 1361, 1367 (Fed. Cir. 2005). The APA requires the PTO “to provide prior notice to the applicant of all ‘matters of fact and law asserted’ prior to an appeal hearing before the Board.” Stepan, 660 F.3d at 1345 (quoting 5 U.S.C. § 554(b)(3)) […]
In re Biedermann at *12 (some internal citations omitted).
Legal Standard for New Grounds of RejectionWhen considering whether the Board issued a new ground of rejection, the “ultimate criterion of whether a rejection is considered ‘new’ in a decision by the Board is whether applicants have had fair opportunity to react to the thrust of the rejection.” […]. While “[t]he Board need not recite and agree with the examiner’s rejection in haec verba to avoid issuing a new ground of rejection,” [m]ere 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. [T]he Board’s power to [make additional findings] 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. […] A new ground of rejection, however, generally will not be found based on the Board “further explain[ing] the examiner’s rejection” or the Board’s thoroughness in respond- ing to an applicant’s argument. […]
Id. at *13-14 (text added, internal citations omitted).
[1] Obviousness Grounds: Examiner "efficiency" v. Board "interchangeability"
Prosecution History
Examiner Position: "efficiency" The examiner considered Cotrel to disclose all elements of the claimed invention except for the orientation of the two flanks of the inner thread enclosing an angle of 90° with respect to the central axis of the holding portion. As for the missing thread configuration, the examiner relied on Steinbock, stating: […] it is noted that Steinbock teaches different types of threads with a square thread being the most efficient for load transfer (col. 1, lines 14–44). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have provided threads with a square profile on the Cotrel legs, as taught by Steinbock, for efficient load transfer.
In re Biedermann at *6-7.
Board Position: "interchangability"The Board specifically found that[:] [t]he fact that Steinbock groups square, Acme, and buttress threadforms would at least suggest their interchangeability […] Thus, one of ordinary skill in the art would have a reasonable expectation that a square threadform, which, like the buttress thread is also typically used for axial translation, would function in a manner similar to a saw-tooth or buttress thread to eliminate the radial component of a load on screwing, thereby discouraging spreading of Cotrel’s flanks . . . , or splaying. The Examiner’s discussion as to the benefits that would be realized by Cotrel from improved efficiency is limited. However, this characteristic appears to be just one of several factors, including machinability, that one of ordinary skill in the art would consider when selecting an appropriate threadform.
Id. at *7-8 (text added).
Board's Grounds for Obviousness amounted to a New RejectionWhile the examiner in the Examiner’s Answer made a passing reference to splaying in relation to the gaps between the inner and outer threads, the examiner’s rejection neither relied upon nor even noted the avoidance of splaying as a factor.The Board, on the other hand, found new facts as the basis for concluding that the combination of Cotrel and Steinbock would have been obvious: that Cotrel teaches avoiding splaying with saw-tooth threads; that saw-tooth threads are buttress threads; that Steinbock groups together the square threads and buttress threads; and that square threads avoid splaying. The principal reason the examiner combined the references was the efficiency of a square thread. The principal reason the Board affirmed the combination of the references was the avoidance of splaying by using square threads. These are different grounds and form the bases or underpinnings of different rejections.
Id. at *14-15.
[2] Introducing the Machinery’s Handbook reference
Prosecution History"In analyzing the propriety of the examiner’s rejection, the Board discussed the threads shown in Cotrel and Steinbock and also made reference, for the first time, to Erik Oberg et al., Machinery’s Handbook (Christopher J. McCauley et al. eds., 26th ed. 2000) (“Machinery’s Handbook”)." In re Biedermann at *7. "The Board asserted that it did not change the thrust of the rejection and instead “merely relied upon a reference akin to a technical dictionary to confirm the meaning of terms used in the references before us.” Id." Id. at *9.
Legal Standard for New Reference[T]he citation of a new reference will be a new ground of rejection in some instances: Ordinarily, citation by the board of a new reference, such as the dictionary in this case, and reliance thereon to support a rejection, will be considered as tantamount to the assertion of a new ground of rejection. This will not be the case, however, where such a reference is a standard work, cited only to support a fact judicially noticed and . . . the fact so noticed plays a minor role, serving only to fill in the gaps which might exist in the evidentiary showing made by the Examiner to support a particular ground for rejection.
Id. at *16.
Introducing a New Explanatory Reference, For Altering an Obviousness Grounds, Is tantamount to a New RejectionIn this case, the Board used the Machinery’s Handbook to associate buttress and saw-tooth threads. There is no clear gap in the examiner’s reasoning that would be filled by the association between saw-tooth and buttress threads, particularly since Cotrel’s threads appear irrelevant to the examiner’s reasoning. Rather, the association between saw-tooth and buttress threads played an important role, not a minor role, in the Board’s new reasoning by providing the link to associate Cotrel’s threads with one of the threadforms grouped in Steinbock. The
Machinery’s Handbook, thus, was used as part of the new ground of rejection.
Id. at *16.
[3] Consideration of "teaching Away" - Machinability
Commenting on machinability, the Board noted that the square thread was beneficial, but that its “drawback, according to Steinbock, is difficulty cutting. The record, when considered as a whole, does not support [Bieder- mann’s] position that difficulty cutting square threads would lead one away from their use if one desired . . . their] benefit.” Id. at *2
In re Biedermann at *9-10.
The Board’s treatment of machinability in the Decision on Appeal was also a new ground of rejection. The Board treated machinability as another factor, in addition to efficiency, that one of ordinary skill would consider in selecting a threadform, making it part of the reason to combine the references. See Decision on Appeal, at *2. […] [However,] [t]here is no apparent connection between machinability and the examiner’s reason to combine based on efficiency.
Id. at *17 (text added).
Conclusion
For the foregoing reasons, this court vacates the Board’s decision and remands for further proceedings.
In re Biedermann at *17 (text added).

 
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