Federal Circuit Ruling: Any Argument Supported by the Record Should be Considered by the PTO Board

By: Joseph Carnicella, intellectual property attorney with Picadio Sneath Miller & Norton, P.C.

On January 23, 2013, the Federal Circuit in Rexnord Industries LLC v. Kappos (2011-1434) determined that the USPTO Board of Patent Appeals and Interferences (the “PTO Board”) erred when it declined to consider arguments that were made to the patent examiner but not raised on appeal to the PTO Board.

Habasit Belting, Inc. filed a patent infringement suit against Rexnord Industries LLC with respect to U.S. Patent No. 6,523,680 (the ‘680 patent), wherein Rexnord requested inter partes reexamination of the ‘680 patent.  On reexamination, the examiner held all of the claims in the ‘680 patent unpatentable for anticipation and obviousness based on four prior art references cited by Rexnord.  However, on appeal by Habasit (the appellant regarding the reexamination decision), the PTO Board held the claims patentable.  As a result of the PTO Board’s reversal, Rexnord (the appellee regarding the reexamination decision) requested rehearing and argued that the PTO Board overlooked a portion of the examiner’s analysis in rejecting the claims.  The PTO Board denied the rehearing request.

Rexnord subsequently appealed the PTO Board’s decision and its refusal to review all of the arguments raised by Rexnord regarding the unpatentability of the ‘680 patent.  On this appeal, the PTO argued that the PTO Board need not consider other grounds that had been presented during the reexamination if those arguments were not raised on the appeal to the PTO Board.  However, the Federal Circuit concluded that Rexnord presented the prior art references to the examiner and that the references did not relate to a patentability issue again until after the PTO Board reversed the examiner.  The Federal Circuit held that 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.  In this matter, the Federal Circuit determined that Rexnord requested on rehearing that the PTO Board consider the other grounds in support of the examiner’s decision, and that the PTO Board erred in declining to consider the references presented for reexamination and in declining to consider Rexnord’s arguments in support of the examiner’s decision.