See IN RE LEITHEM
Issue(s): Did the Board of Patent Appeals and Interferences (“Board”) err in affirming the examiner’s rejection where it used the same reference as the examiner, but a different rationale for the rejection?
IN RE PHYLLIS LEITHEM, et al. (2011-1030) Appeal from the United States Patent and Trademark Office, Board of Patent Appeals and Interferences. (Decided: September 19, 2011); Before NEWMAN, BRYSON, and LINN (Author),
Facts: Leithem’s patent application discloses an improved personal hygiene device (“diaper”). Traditional diapers are constructed using an absorbent core of dry shredded wood fiber pulp, known as fluff pulp, interposed between a water barrier sheet and a permeable layer that allows liquid to pass through to the absorbent fluff pulp core. For absorption intensive devices, such as baby diapers, the fluff pulp is often pretreated with a chemical cross-linking agent. Chemical cross-linking increases the wet stiffness of the fluff pulp so that it retains its bulk and pore volume when wet, thereby enhancing its absorbency and preventing “wet collapse.” Leithem contends that prior to the discovery disclosed in the ’585 Application, it was not believed to be possible to achieve the absorption, liquid retention, softness, and pad integrity of modern diapers without using chemically cross-linked fluff pulp.
The examiner originally rejected the claims as obvious under 35 U.S.C. § 103 over U.S. Patent No. 3,658,064 (“Pociluyko”) in view of U.S. Patent No. 2,083,575 (“Novak”). The examiner explained that Pociluyko discloses a diaper satisfying every element of claim 104 except that Pociluyko was “silent as to the method of manufacturing the fluff pulp.” In other words, Pociluyko did not disclose using a fluff pulp that satisfied the cold caustic extraction limitation. The examiner then explained that Novak discloses cold caustic extraction of wood pulp and “a method of making fluff pulp.”
BPAI’s Disposition: On appeal to the Board, Leithem argued that “Novak does not teach that his pulp is fluffed.” Instead, Leithem observed that the pulp product of Novak is a wet-laid paper and not a fluff material as the examiner alleged. Id. Because Novak describes the manufacture of wet-laid paper, not dry shredded fluff, Leithem argued that those skilled in the art could not simply substitute the wet-laid paper product of Novak for the dried fluff pulp of Pociluyko to produce the claimed invention. Accordingly, Leithem contended that the examiner’s § 103 rejection was improper.
The Board, in its initial decision, agreed with Leithem that Novak only discloses the cold caustic treatment of pulp to produce a wet-laid paper. The Board found that, while Novak itself does not disclose a fluffed pulp, “the Novak pulp is a pulp which may be fluffed for use in an absorbent core.” The Board reached this conclusion because Novak’s goal was to create a more absorptive paper and one of skill in the art “would have had reason to use this pulp as a fluffed pulp in an absorbent product such as Pociluyko.”
Leithem then petitioned the Board for rehearing. Lei them contended that the Board, in affirming the examiner, relied on a new ground of rejection. Specifically, Leithem explained that the examiner did not find that the caustic extracted pulp of Novak could be mechanically fluffed and used in the product of Pociluyko. Instead, the examiner simply found that Novak’s wet-laid pulp was itself already a fluff pulp. Thus, according to Leithem, the Board relied on a new ground of rejection when it affirmed the examiner on the basis that Novak’s pulp was not fluffed, but could be dried, fluffed, and then used as disclosed in Pociluyko.
The Board disagreed. The Board initially observed that both the examiner and the Board had rejected the claim under 35 U.S.C. § 103 over Novak and Pociluyko. Although the Board acknowledged Leithem’s argument that Novak does not teach fluffing, the Board reiterated that the examiner found that Novak’s pulp was fluffed. Because the examiner’s rejection referred to “pulp,” Leithem’s appeal brief to the Board referred to “pulp,” and the Board referred to “pulp” in its initial decision, the Board determined that the thrust of the rejection had not changed and denied Leithem’s request for rehearing.
Findings on Appeal: Leithem argues that the Board relied on a new ground of rejection in affirming the examiner’s rejection. Leithem contends that the examiner rejected claim 104 on the basis that Novak teaches a cold caustic extracted fluff pulp, even though Novak only teaches making wet-laid paper from cold caustic extracted pulp. Leithem agrees that the wet-laid paper of Novak could be dried and then shredded in a hammermill to make fluff pulp, but points out that this was not the basis of the examiner’s rejection. Leithem argues that the Board relied on a new rationale for its rejection by finding that it would have been obvious to take Novak’s cold caustic extracted pulp, dry it, shred it into a fluff, and then combine it with the diaper of Pociluyko.
The Office argues that the Board did not impose a new ground of rejection.
The Board’s statutory authority requires the Board to review, on appeal, adverse decisions of the examiner. The Board need not recite and agree with the examiner’s rejection in haec verba to avoid issuing a new ground of rejection. However, 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.
Rather than reviewing arguments directed towards ever-shifting rejections, this court is instead only presented with arguments concerning those rejections properly made by the examiner and, in due time, reviewed by the Board. Here, the examiner cited Novak as teaching a fluff pulp. This view of Novak is contrary to the examiner’s assertion that Novak discloses or teaches fluff pulp.
The Board agreed with Leithem but instead affirmed the examiner’s rejection by finding that Novak teaches a pulp “which may be fluffed.” The Board thus found new facts concerning the scope and content of the prior art. These new facts relate to whether the prior art discloses or teaches fluffing cold caustic extracted wood pulp to make fluff pulp for use in the diaper of Pociluyko. These facts were the principal evidence upon which the Board’s rejection was based. Leithem would certainly have responded differently had the examiner’s original rejection been premised upon Novak teaching pulp “which may be fluffed” as opposed to teaching fluff pulp which could be directly substituted into the diaper of Pociluyko.
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 reconsideration, 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. 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.
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.
Allen’s Observations: The case is literally fact specific. Basically, the examiner made an obviousness rejection on one fact, and then the BPAI mutated this “fact” to support another rationale for the rejection. I have personally seen this happen, as I am sure many other practitioners have. While it would seem that an appeal is the best way to finally overcome a rejection, the problem is that the appeals process very long. Many times, clients will simply opt to amend the claims to obtain patentable subject matter and save the appeal for another day. The result is that patentees often are “bullied” into accepting a narrower scope than they are entitled.
