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 administrative law. Here, for example, the patentee was found to have waived its “new ground of rejection” claim by failing to seek rehearing and the rule requiring this procedure was upheld. “There is nothing unreasonable about the PTO’s rule requiring that ‘new ground of rejection’ claims be raised in a request for rehearing.” It may therefore be best to file a request for rehearing in order to preserve all issues and in particular a “new ground of rejection” claim for appellate review if further appeals are desired.
Background / Facts: The patent on appeal here from rejection at the PTO was held invalid by the Board during a reexamination proceeding. The patentee argued that the Board’s decision in that regard constituted a new ground of rejection. By regulation, a party that wishes to raise the claim that the Board has adopted a new ground of rejection must do so by filing a request for rehearing before the Board. Failure to file a timely request for rehearing, according to the regulation, “will constitute a waiver of any arguments that a decision contains an undesignated new ground of rejection.” 37 C.F.R. § 41.50(c)
Issue(s): Whether the regulation requiring that “new ground of rejection” claims be raised in a request for rehearing is invalid because it restricts the court system’s ability to review a final decision over which it has jurisdiction.
Holding(s): No. “Under well-settled principles of administrative law, parties who seek to raise issues on judicial review of administrative action ordinarily must first exhaust their administrative remedies by raising those issues before the agency in accordance with the prescribed administrative procedures. … There is nothing unreasonable about the PTO’s rule requiring that ‘new ground of rejection’ claims be raised in a request for rehearing. It is far more efficient to proceed in that manner than to have the case proceed to judicial review and then have the ‘new ground of rejection’ issue decided without input from the Board. Accordingly, we hold that by failing to file a petition for rehearing, [the patentee] has waived its ‘new ground of rejection’ claim.”