November 2013
Board’s Finding of New Factual Basis for Reason to Combine and Reliance on New Reference Constituted New Grounds of Rejection
| Judges: Moore, Linn (author), O’Malley |
| [Appealed from Board] |
In In re Biedermann, No. 13-1080 (Fed. Cir. Oct. 18, 2013), the Federal Circuit vacated a Board decision affirming the rejection of claims for obviousness and remanded the case for further proceedings, holding that the Board issued new grounds of rejection.
U.S. Patent Application No. 10/306,057 (“the ’057 application”) discloses a bone screw with a shank and a holding portion for a rod that connects to other bone screws. The legs of the holding portion have an inner thread that cooperates with the outer thread of a locking element or screw to hold the rod securely in place. The inner and outer threads are sometimes referred to as square threads, and they have flanks at 90-degree angles to the central axis of the holding portion and locking element, respectively. The ’057 application describes the threads as advantageously avoiding splaying of the holding portion’s legs and as easy to produce.
The examiner rejected claims 32, 33, 35-37, 39, and 48 as obvious over U.S. Patent Nos. 5,005,562 (“Cotrel”) and 4,846,614 (“Steinbock”), and further in view of U.S. Patent No. 4,688,832 (“Ortloff”). The examiner considered Cotrel to disclose all elements of the claimed invention except for the 90-degree orientation of the flanks of the inner thread, which the examiner found was disclosed in Steinbock. The examiner relied on Ortloff for its disclosure of gaps or clearances between the crest of the outer thread and the root of the inner thread, noting that this feature would be inherent in a device combining Cotrel and Steinbock. The examiner concluded that it would have been obvious to one of ordinary skill in the art at the time of invention to have provided threads with a square profile on the Cotrel legs, as taught by Steinback, for efficient load transfer.
The Board affirmed the examiner’s rejections, discussing Cotrel, Steinbock, and, for the first time, a Machinery’s Handbook reference. The Board did not reach Ortloff and instead relied on the examiner’s alternative inherency rationale with respect to the gap. The Board found that Cotrel discloses the use of a saw-tooth pitch to avoid the spreading of the flanks, and that the Machinery’s Handbook indicates a saw-tooth thread is a buttress thread. The Board specifically found that Steinbock’s grouping of the square, Acme, and buttress threadforms would at least suggest their interchangeability. The Board denied the applicant’s request for reconsideration, and the applicant appealed.
“The thrust of the rejection changed when the Board found a new factual basis for the reason to combine. 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.” Slip op. at 15.
On appeal, the Federal Circuit stated that the central question was “whether the Board and the examiner properly relied on the same articulated reasoning and factual underpinnings in rejecting [the] claims or whether the Board made new findings and adopted different reasons to support a new ground of rejection, thus depriving [the applicant] of both notice and an opportunity to respond.” Slip op. at 11. The Court noted that the question turned on whether the applicant “had fair opportunity to react to the thrust of the rejection.” Id. at 13 (quoting In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011)).
The Court found that the principal reason the examiner combined the references was the efficiency of a square thread, while the principal reason the Board affirmed the combination of references was the avoidance of splaying by using the square threads. The Court held that “[t]hese are different grounds and form the bases or underpinnings of different rejections,” noting that the Board itself recognized that efficiency and avoiding splaying were different. Id. at 15.
The Court reasoned that the Board changed the thrust of the rejection when it found a new factual basis for the reason to combine the references. The Court stated, “[T]he 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.” Id. Rejecting the argument that the Board was merely responding to the applicant’s arguments, the Court stated that “[a] new ground of rejection is not negated by the fact that the Board is responding to an appellant’s argument.” Id.
Regarding the Machinery’s Handbook, the Court noted that citation to and reliance on a new reference will ordinarily be considered tantamount to a new ground of rejection unless the 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 (quoting In re Boon, 439 F.2d 724, 727-28 (CCPA 1971)). The Court held that the Machinery’s Handbook was used as part of the new ground of rejection, reasoning that the Board used the reference to associate buttress and saw-tooth threads. According to the Court, this association filled no clear gap in the examiner’s reasoning and instead played an important role in the Board’s new reasoning.
Finally, the Court concluded that the Board also issued a new ground of rejection by treating machinability as another factor supporting the reason to combine references. The Court reasoned, “There is no apparent connection between machinability and the examiner’s reason to combine based on efficiency.” Id. at 17. The Court thus vacated the Board’s decision and remanded the case for further proceedings.
*Adam S. Boger is a Law Clerk at Finnegan.
