In affirming a decision by the U.S. Patent and Trademark Board of Appeals and Interferences (the Board), the U.S. Court of Appeals for the Federal Circuit held that although new arguments from the applicant could not be considered on appeal, a failure by the Board to make a rejection that the Court believes would clearly be made on remand, allows the Court to affirm the Board rather than remand. In re Watts, Jr., Case No. 03-1121 (Fed. Cir. Jan. 15, 2004).
Watts received two obviousness rejections under 35 U.S.C. § 103(a). The first rejected most of the claims as being obvious in view of the combination of three patents, Howell, Kikinis and Gephart, respectively. The second rejection, directed to different claims, was based on only Howell and Kikinis. The rejections were upheld by the Board. Watts appealed.
In traversing the first obviousness rejection, Watts relied on the same arguments as presented to the examiner and the Board, but further advanced a new argument against the Gephart reference. The Court rejected the original arguments presented by Watts and refused to consider the new argument because it was not presented before the Board. Thus, the Federal Circuit affirmed the Board on the first rejection.
However, the solicitor representing the U.S. Patent and Trademark Office acknowledged that the second rejection, which did not include the Gephart reference, could not stand without the Gephart reference. Watts asserted that remand to the Board was required because the Court was only permitted to affirm the Board, if at all, on the reasons set forth in the Board’s decision. Rejecting Watts’ argument, the Court held that a mistake by the Board is a harmless error if it is clear that the Board would have reached the same ultimate result had it not made the mistake.
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