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Date for Timely Appealing Board Decision Runs from the Date the Board Mails Its Decision

July 31, 2009

Decision icon Decision

Last Month at the Federal Circuit - August 2009

Judges: Michel (author), Rader, Dyk (dissenting)

[Appealed from: Board]

In In re McNeil-PPC, Inc., No. 08-1546 (Fed. Cir. July 31, 2009), the Federal Circuit held that the date from which the time is set to file an appeal from decisions by the Board is the date the decision was mailed. Concluding that McNeil-PPC, Inc. (“McNeil”) had timely appealed the Board’s decision, the Court then reversed the Board’s decision upholding the examiner’s anticipation and obviousness rejections of claims 1, 3, and 4 of U.S. Patent No. 6,310,269 (“the ‘269 patent”) on reexamination.

The claims at issue are directed to a tampon for feminine hygiene having a solid fiber core with longitudinal ribs that extend radially outward. During reexamination of the ‘269 patent, the examiner rejected claims 1 and 3 as anticipated and claim 4 as obvious in view of unexamined Japanese Application No. 55-168330 by Tetsu Sasaki (“Sasaki”), which describes stitching together layers of material to make a tampon blank, which is then molded into a finished tampon.

McNeil appealed the examiner’s rejections to the Board. The Board affirmed the examiner’s rejection, stating that “Sasaki reasonably appears to depict a tampon having a generally cylindrical absorbent portion with a generally cylindrical compressed solid fiber core from which longitudinal ribs extend radially outward.” Slip op. at 3 (citing Ex parte McNeil-PPG, Inc., No. 07-3158, 2007 WL 3325022 (B.P.A.I. Nov. 8, 2007)). McNeil then filed a request for rehearing, but the Board denied the request.

The typed date on the face of the Board’s denial is “May 30, 2008,” and the online “Transaction History” lists the date for the entry “Mail BPAI Decision on Reconsideration – Denied” as “May 30, 2008.” Id. The mailing sheet for the order, however, is dated “June 2, 2008,” and the online “image file wrapper” lists the “Mail Room Date” of the decision as “June 2, 2008.” Id. at 4. McNeil filed a notice of appeal on August 1, 2008. The Director objected to the appeal as untimely as it was filed more than sixty days after the Board’s decision on May 30, 2008.

The Federal Circuit first addressed whether McNeil’s appeal was timely because “[compliance with the PTO rules regarding the time for an appeal is required by statute, and while the Director can grant extensions of time, [the Court] cannot.” Id. (citing In re Reese, 359 F.2d 462, 463 (C.C.P.A. 1966) (per curiam)).

The relevant regulation governing the time for appealing a decision by the Board states in pertinent part: “The time for filing the notice of appeal to the U.S. Court of Appeals for the Federal Circuit (§ 1.302) or for commencing a civil action (§ 1.303) is two months from the date of the decision of the Board of Patent Appeals and Interferences. If a request for rehearing or reconsideration of the decision is filed within the time period provided under § 41.52(a), § 41.79(a), or § 41.127(d) of this title, the time for filing an appeal or commencing a civil action shall expire two months after action on the request.” Id. at 5 (citing 37 C.F.R. § 1.304(a)(1) (emphases added)).

The Court noted that the first sentence of the regulation uses the phrase “date of the decision” to set the time to appeal, while the second sentence of the regulation employs “action on the request.” The Court determined, however, that the intent of both phrases was the same. Specifically, the Court stated “that the same sixty-day rule (and not some shorter time period) applies.” Id. Thus, the Court focused on the phrase “the date of the decision” and concluded that the meaning of that phrase was the crucial issue. Essentially, the Court had to decide whether May 30, 2008, or June 2, 2008, represented “the date of the decision.”

In deciding this issue, the Court relied on a declaration presented by McNeil from a previous member of the Board, who opined that “perhaps one of the members of the Board panel decided to revise the opinion or reconsider it over the weekend of May 31 and June 1, 2008.” Id. at 6. The Court concluded that, based on the evidence before it, “it appears that only when an opinion is released to the public (or at least the parties) is it truly decided—until then, it is possible for the Board to decide to revise it.” Id.

The Court noted that the “Transaction History,” which listed the “Mail BPAI Decision on Reconsideration – Denied” as “May 30, 2008,”supported the PTO’s position. However, because both parties seemed to agree that the decision was mailed on June 2, 2008, the Courtdetermined that the “Transaction History” was inaccurate.

The Court then considered its prior decision in Barbacid v. Brown, 223 F. App’x 972 (Fed. Cir. 2007), an unpublished order cited by the PTO. In Barbacid, the Board mailed its decision to Brown but not to Barbacid. Barbacid appealed upon learning of the Board’s decision, but the Court deemed the appeal untimely, stating that “‘[t]he time is not measured from the date of receipt of the Board’s decision but from the date of the decision itself.’” Id. at 7 (quoting Barbacid, 223 F. App’x at 973). The Court pointed out, however, that in Barbacid, they did not specify what “the date of the decision” was. Further, the Court noted that the timeliness of Barbacid’s appeal was not just a matter of a few days, unlike the instant case.

The Court found that because the “Transaction History” page appeared inaccurate and that McNeil’s declaration, corroborated by the “image file wrapper,” offered the most plausible explanation for the different dates, “the Board issued its decision on McNeil’s request on June 2, 2008, and that the Board therefore decided this case on June 2, 2008, not May 30.” Id. Thus, the Court concluded that McNeil’s appeal was timely.

The Court next turned to the merits, determining whether there was substantial evidence that supported the Board’s finding that a tampon with the characteristics claimed by McNeil was anticipated by Sasaki. Id. at 7-8 (citing In re Graves, 69 F.3d 1147, 1151 (Fed. Cir. 1995)). The Court established that there was not substantial evidence to support the Board’s determination. Specifically, the Court concluded that Sasaki does not disclose a tampon with ribs that are compressed less than the fiber core as claimed in the ‘269 patent and observed that it was not clear that Sasaki’s tampon even has a “core.” The Court further noted that Figure 8 in Sasaki suggests that the tampon is composed solely of six ribs. Thus, the Court concluded that not only was there not substantial evidence but, “indeed, no evidence, that Sasaki discloses ribs ‘compressed less than the fiber core’ or ‘a generally cylindrical compressed, solid fibre core.’” Id. at 10. In addition, because the Court determined that it was unclear whether Sasaki’s tampon had a core and which portions of the tampon were the ribs, the Court also stated that there was not substantial evidence to support the Board’s contention that Sasaki disclosed ribs separated from each other more at the proximal than the distal end, as claimed in the ‘269 patent. Thus, the Court reversed the Board’s rejection of claim 1, and because claims 1, 3, and 4 stood or fell together, the Court also reversed the rejections of claims 3 and 4.

In a dissenting opinion, Judge Dyk disagreed with the majority’s conclusion that McNeil’s appeal was timely filed. Judge Dyk argued “that the plain language of the statute and regulation state, the relevant date is the ‘date of decision,’ not the date of mailing.” Dyk Dissent at 3. Judge Dyk noted that “[i]f Congress and the PTO had intended to refer to the mailing date, they could easily have done so.” Id. In support of that contention, Judge Dyk pointed to 37 C.F.R. §§ 1.181(f), 1.97(c), and 2.105(a) as regulations that prescribe the mailing date as the date from which a deadline is set. Thus, Judge Dyk determined that May 30, 2008, the date listed on the face of the opinion as the date it was decided, should be deemed “the date of the decision.”

Judge Dyk also argued that prior decisions had addressed this issue and had rejected the majority’s approach. Specifically, Burton v. Bentley, 14 App. D.C. 471, 1899 WL 16315 (C.A.D.C. 1899), involved determining the deadline to appeal a PTO decision when the mailing date and the date on the decision were different. The Court of Appeals for the District of Columbia “held that the relevant date was the date the order was made and signed by the deciding official, and that a two-day clerical delay in mailing the order was irrelevant to the date of decision.” Dyk Dissent at 4. In addition, Judge Dyk pointed to In re Reese, 359 F.2d 462, 463 (C.C.P.A. 1966), in which the Court of Customs and Patent Appeals “referred to the relevant ‘date of the decision appealed from’ . . . as the date the decision itself was dated.” Dyk Dissent at 5 (citation omitted). Lastly, Judge Dyk noted the decision in Barbacid. In Barbacid, the Court stated that the time for filing an appeal to the Court “is not measured from the date of receipt of the Board’s decision but from the date of the decision itself.” Id. (quoting Barbacid, 223 F. App’x at 973).

Judge Dyk concluded that the appeal should be dismissed because May 30, 2008, was the date of the decision and the Court lacked jurisdiction pursuant to the untimely filed notice of appeal.

 Summary authored by Marya K. Jones, Ph.D., student associate at Finnegan.