The Board has been encouraged here by the Federal Circuit to review the examiner’s rejections for consistency and make independent rejections based at least on the art before it where appropriate. Depending on how this plays out, it may make sense to proactively argue against such potential alternative rejections in the appeal brief in an attempt to head them off, lest the Board hand down independent rejections that will be all the more difficult to traverse with the examiner.
Background / Facts: The patent on appeal here from inter partes reexamination at the PTO is directed to a visual inspection system for printing presses. Despite the similarity in scope between different claim groups, the examiner applied different combinations of prior art to each. The Board upheld the rejections based on certain combinations of the prior art but reversed others.
Issue(s): Whether the Board should have further investigated applying the combination of prior art from the upheld rejections to the other claims.
Holding(s): Yes. “[W]hen all these references were before the Board, and this court, an obligation is owed to the public not to permit inconsistent results when a proper challenge to that inconsistency is made on appeal. The Board should have observed the similarities between the claims, noted those similarities between the claims and the references before the Board on appeal, analyzed whether the combination of [certain references] would have rendered [the other claims] obvious, and if so, issued a new ground of rejection.” While emphasizing that “[w]e do not hold that the Board should always apply references that are before it affecting some claims to every other claim on appeal,” the court stated that “we do find that in this instance, in which nearly identical claims were found both valid and invalid due to similar combinations of prior art resulting in a Board opinion that was seemingly inconsistent, the Board erred by not considering the combination of [certain references before it] as a new ground for rejection of [other] claims.”