“On judicial review, the correctness of the decision appealed from can be defended by the appellee on any ground that is supported by the record.”
Background / Facts: The patent here is directed to a mechanical conveyor belt formed of rows of belt modules interlinked by transverse rods. The interlinked modules form an endless belt that is capable of following a curved path. The claims relate to the spaces between the belt modules, which are blocked by plastic “webs” so that the spaces are too small to pinch items such as a finger, and recite that the spaces are less than 10 mm in diameter. During an inter partes reexamination, the Examiner rejected the claims as being anticipated and obvious but was overruled on appeal by the Board. In a request for rehearing, the third-party requestor turned appellee brought up a design choice argument from its initial third-party request as an alternative ground for affirming the Examiner’s rejections. The Board, however, declined to consider this “new theory,” stating that it “does not consider aspects beyond those relied on by the examiner.”
Issue(s): Whether the Board must consider arguments in support of the decision being appealed that go beyond those relied upon in initially making the decision, and, hence, beyond those attacked by the appellant in its initial brief.
Holding(s): Yes. The Board erred in declining to consider the appellee’s further arguments in support of the Examiner’s decision being overturned on appeal. “We observe that Rexnord was not the appellant before the Board [but the appellee], and that the premise [that the Board has a rule that bars the presentation of new arguments outside appellant’s opening brief] is an incorrect statement of the appellate process. On judicial review, the correctness of the decision appealed from can be defended by the appellee on any ground that is supported by the record, whether or not the appellant raised the argument.”