United States: PTAB May Be Obliged To Consider New Rejection To Avoid Inconsistent Results

When reviewing an Examiner's decision, the Patent Trial and Appeal Board may issue a new ground of rejection.  37 C.F.R. § 41.77(b).  The Federal Circuit held that there can be an "obligation" to do so when examination leads to inconsistent results and "a proper challenge to that inconsistency is made on appeal."  Q.I. Press Controls, B.V. v. Lee, 111 U.S.P.Q.2d 1272, 1280 (Fed. Cir. 2014).

Q.I. Press was an appeal from an inter partes reexamination of U.S. Patent No. 6,867,423 (the "'423 patent"), owned by Quad/Tech, Inc.  The '423 patent concerns a visual inspection system for printing presses.  The petitioner, Q.I. Press Controls, B.V., appealed the Board's decision that, among other things, claims 1-17 and 19-60 would not have been obvious.  Quad/Tech cross-appealed the Board's decision that claims 61-72 would have been obvious. 

Claim 1 was representative of claims 1-60, and recited a visual inspection system for printing presses comprising, among other things, an image recording device, a processing unit, and an illumination system including a plurality of LEDs.  Claim 61 was representative of claims 61-72 and, like claim 1, also recited a visual inspection system including an image recording device, a processing unit, and an illumination system comprising a plurality of LEDs.  According to the court, the only meaningful differences between the claims were: (i) the image recording device of claim 61 acquires an image "from a substrate on a printing press," whereas the image recording device of claim 1 records "images printed on the substrate"; (ii) the illumination system of claim 61 surrounds the optical image recording device and is adapted to illuminate the printing press substrate, whereas the illumination system of claim 1 is in a circular configuration; and (iii) the processing unit of claim 61 is configured to process the recorded image, whereas the processing unit of claim 1 is configured to generate an output.  The court characterized these differences as minor.  Id. at 1279.

The Board had reversed an obviousness rejection of claim 1-17 and 19-60 on the basis that neither of the two asserted references had suggested using a visual inspection system with LED lighting in communication with a printing press.  Meanwhile, the Board affirmed an obviousness rejection of claims 61-72 over a different combination of references, including a primary reference disclosing a visual inspection system in optical communication with the substrate of a printing press. 

The court observed that given "the minor differences in the claims themselves and similarities in the cited prior art, it seems apparent that the combination of [the two references applied against claim 61] discloses many of the elements of claims 1-60."  Id. at 1279.  The court further explained that the Board had "an obligation is owed to the public not to permit inconsistent results" given the references before it and a proper challenge to the inconsistency.  Id. at 1280.  Thus, 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 Sainio and Ross would have rendered claims 1-60 obvious, and if so, issued a new ground of rejection."  Id.  The court vacated and remanded the Board decision to the extent that it held that claims 1-60 would not have been obvious. 

The Leahy-Smith America Invents Act, Pub. L. 112-29, 125 Stat. 284, enacted in 2011, replaced inter partes reexaminations with inter partes reviews, in which the Board has original jurisdiction and controls which grounds of alleged unpatentability are adjudicated.  Most appeals heard by the Board going forward will be from ex parte reexamination or prosecution.  Thus, it will be a rare case where the Board will have an "obligation" to consider a new ground of rejection on appeal because a petitioner challenged an arguably inconsistent result.  Following this Federal Circuit decision, the Board may become more eager to apply new grounds of rejection sua sponte in an effort to avoid finding "nearly identical claims . . . both valid and invalid due to similar combinations of prior art" and issuing an "opinion that [is] seemingly inconsistent."  Id. at 1280.  Given the Board's current multi-year backlog for ex parte appeals, even a new ground of rejection that is ultimately overcome can still be quite undesirable.

The type of new ground of rejection contemplated in Q.I. Press can arise only when the Examiner applied different art to two or more groups of claims on appeal, and is unlikely unless the claims have only minor differences.  In some cases arising out of ex parte prosecution, it may be worth considering isolating such groups of claims, e.g., by moving one of the groups into a continuation application.  Filing a continuation application has other benefits, e.g., extending the opportunity to seek broader claims further into the future and potentially avoiding the need for reissue, should any errors be later discovered.  In making such a decision, applicants should consider other factors such as the impact on patent term adjustment and whether a terminal disclaimer may be required.

This article previously appear in Full Disclosure Patent Newsletter, September 2014.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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22 Jan 2019, Webinar, Washington, DC, United States

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Finnegan is a sponsor of the Association of Corporate Patent Counsel Winter Meeting. Finnegan partner Erika Arner will join the panel discussion “PTAB Review & Litigation.

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