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Final Rejection of Diaper Patent Application Reversed Based on BPAI's Reliance on New Ground of Rejection

Tuesday, October 4, 2011

In re Leithem, No. 11-01030, 2011 BL 238334 (Fed. Cir. Sept. 19, 2011) The U.S. Court of Appeals reversed a decision of the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences ("BPAI") holding an application for a diaper invalid as obvious, finding the BPAI rejected the patent on a different ground than the one used by the patent examiner.

Cold Caustic Extracted Fluff Pulp

Phyllis Leithem, Charles Kremers, W. Paul Harrell, Stephen Lewis, Karl Sears, Quan He, and Peter Abitz (collectively, "Leithem") are the inventors of U.S. Patent Application No. 09/863,585 (the '585 application), relating to a diaper comprising an absorbent core of "wood fiber pulp that has been cold caustic extracted and fluffed by mechanical action and is without chemical crosslinking." The examiner rejected the sole pending claim as obvious over U.S. Patent No.3,658,064 (the '064 patent) in view of U.S. Patent No. 2,083,575 (the '575 patent). The '064 patent met every claim limitation of the '585 application except for the cold caustic method of making fluff pulp. The examiner found that it would have been obvious to modify the invention disclosed in the '064 patent with a fluff pulp made by the cold caustic extraction method taught in the '575 patent. On appeal to the BPAI, Leithem argued that the '575 patent described the manufacture of wet-laid paper, a liquid slurry of water and wood pulp, not fluffed pulp. Although agreeing that the '575 patent only disclosed cold caustic extraction of pulp to produce wet-laid paper, the BPAI concluded that the pulp could be fluffed for use in an absorbent core. Accordingly, the BPAI affirmed the examiner's rejection. Leithem petitioned the BPAI for rehearing, arguing that the BPAI relied on a new ground of rejection in affirming the examiner's ruling, but the BPAI denied Leithem's request for rehearing.

"New" Ground of Rejection Based on BPAI's Reliance on New Facts and Rationales

While acknowledging that the BPAI has the right make additional fact findings to fill any evidentiary gaps, the Federal Circuit clarified that that right is construed narrowly and an applicant must be given an opportunity to respond when reliance on those facts alters the "thrust of the rejection." Leithem at 7. Reviewing the record, the Federal Circuit found that the BPAI agreed that the '575 patent did not teach a fluff pulp but affirmed the rejection on the grounds that the '575 patent teaches a pulp "which may be fluffed." Id. at 8 (emphasis omitted). The court determined that the BPAI relied on new facts not articulated by the examiner relating to whether the prior art discloses making fluff pulp using a cold caustic extraction method and concluded that "fairness dictates that the applicant, in this case Leithem, should be afforded an opportunity to respond to the Board's new rejection." Id. at 9. The Federal Circuit emphasized that: "Mere reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of rejection, when the Board relies on new facts and rationales not previously raised to the applicant by the examiner." Id. (citing In re Kumar, 418 F.3d 1361, 1367-68 (Fed. Cir. 2005)). Moreover, the Federal Circuit found that, on appeal, the USPTO relied on additional facts not addressed by the examiner. Additionally, the court rejected the USPTO's contention at oral argument that Leithem made "a shift in argument" from the one presented to the BPAI. Id. at 10. The Federal Circuit explained that Leithem's argument had to shift because the focus of the BPAI's rejection had shifted. Furthermore, the court reprimanded the BPAI for playing it so "fast and loose" in affirming the examiner's rejection that it disregarded the applicants' procedural protections. Id. at 11. Accordingly, the Federal Circuit reversed and remanded. Disclaimer This document and any discussions set forth herein are for informational purposes only, and should not be construed as legal advice, which has to be addressed to particular facts and circumstances involved in any given situation. Review or use of the document and any discussions does not create an attorney-client relationship with the author or publisher. To the extent that this document may contain suggested provisions, they will require modification to suit a particular transaction, jurisdiction or situation. Please consult with an attorney with the appropriate level of experience if you have any questions. Any tax information contained in the document or discussions is not intended to be used, and cannot be used, for purposes of avoiding penalties imposed under the United States Internal Revenue Code. Any opinions expressed are those of the author. The Bureau of National Affairs, Inc. and its affiliated entities do not take responsibility for the content in this document or discussions and do not make any representation or warranty as to their completeness or accuracy. ©2014 The Bureau of National Affairs, Inc. All rights reserved. Bloomberg Law Reports ® is a registered trademark and service mark of The Bureau of National Affairs, Inc.

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