IN RE HILL-ROM SERVICES, INC. (Fed. Cir. 2015) (NP) – A challenge to a Board decision as constituting a “new ground of rejection” must be raised in rehearing

by Steve Driskill | Dec 2, 2015 | [sub] appellate, PTO Procedure

The PTO’s rule requiring that any challenge to a Board decision as constituting a “new ground of rejection” must be raised in a request for rehearing to preserve it for review by the court system is not unreasonable and is in accordance with the principles of...

IN RE STEED (Fed. Cir. 2015) (P) – No new evidence may be generally submitted on appeal at the PTO that was not before the primary examiner

by Steve Driskill | Oct 1, 2015 | [sub] appellate, PTO Procedure

Absent a recent decision of either the Board or a court, no new evidence may be submitted on appeal at the PTO that was not before the primary examiner. Here, for example, the applicant’s introduction only during the Board hearing of affidavits in support of a Rule...

CSR, PLC v. SKULLCANDY, INC. (Fed. Cir. 2014) (NP) – PTO’s claim construction of disputed terms must be sufficiently explicit to enable appellate review

by Steve Driskill | Dec 16, 2014 | [sub] appellate, PTO Procedure

The PTO’s claim construction must be sufficiently explicit, at least as to any disputed claim term, in order to enable appellate review. Here, for example, the Board’s refusal to construe the term “threshold value” while nevertheless finding that the prior art did not...

ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC. (Fed. Cir. 2014) (NP) – Tangential acknowledgment of a given issue by the board is not sufficient to avoid waiver

by Steve Driskill | Aug 29, 2014 | [sub] appellate, PTO Procedure

Simply prompting the Board during an appeal to acknowledge a given issue in responding to arguments for a fundamentally separate issue is not sufficient to preserve the first issue for further appellate proceedings. In order to make sure that the issue is preserved,...

Q. I. PRESS CONTROLS v. LEE (Fed. Cir. 2014) (P) – Proactive arguments against non-asserted rejections on appeal

by Steve Driskill | Jun 9, 2014 | [sub] appellate, PTO Procedure

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...

GARRIDO v. HOLT (Fed. Cir. 2013) (NP) – Waiver of arguments absent from opening brief on appeal before PTAB

by Steve Driskill | Oct 22, 2013 | [sub] appellate, PTO Procedure

Arguments not raised in an opening brief will generally be considered to have been waived. Background / Facts: The reexamination application on appeal here from the PTAB is directed to an “Electronic Bookstore Vending Machine” for printing and binding books on demand....