• Patent Applicants are Entitled to Have Petitions Treated “Fully and Fairly”, Federal Circuit Confirms
  • September 28, 2011
  • Law Firm: Lowndes Drosdick Doster Kantor Reed Professional Association - Orlando Office
  • The U.S. Court of Appeals for the Federal Circuit rarely reverses a decision of the Board of Patent Appeals and Interferences (the “Board”). It did so recently, however, in a ruling that makes it clear that patent applicants are entitled to have their petitions fully and fairly treated by the U.S. Patent and Trademark Office at the administrative level.


    Traditional diapers are constructed using an absorbent core of dry shredded wood fiber pulp, known as fluff pulp, interposed between a water barrier sheet and a permeable layer that allows liquid to pass through to the absorbent fluff pulp core. The fluff pulp often is pretreated with a chemical cross-linking agent to enhance its absorbency.

    Phyllis Leithem sought to invent a diaper that would avoid the expense of using chemically cross-linked fluff pulp while still retaining the superior absorbency properties characteristic of a cross-linked fluff pulp. Leithem discovered that when wood pulp is extracted with a caustic substance at low temperature and then is dried and fluffed, the resulting fluff pulp is imbued with superior absorbency properties without the need for the extra step and expense of chemically cross-linking the fluff pulp.

    The patent examiner rejected a claim (“claim 104”) in Leithem’s patent application as “obvious” over U.S. Patent No. 3,658,064 (“Pociluyko”) in view of U.S. Patent No. 2,083,575 (“Novak”). The examiner explained that Pociluyko discloses a diaper satisfying every element of Leithem’s claim 104 except that Pociluyko is “silent as to the method of manufacturing the fluff pulp.” The examiner then explained that Novak discloses cold caustic extraction of wood pulp and “a method of making fluff pulp.” According to the examiner, “[i]t would have been obvious to one having ordinary skill in the art . . . to modify the invention of Pociluyko with a fluff pulp made by the method taught in Novak.”

    On appeal to the Board, Leithem observed that the pulp product of Novak is a wet-laid paper and not a fluff material as the examiner had alleged. Because Novak describes the manufacture of wet-laid paper, not dry shredded fluff, Leithem argued that those skilled in the art could not simply substitute the wet-laid paper product of Novak for the dried fluff pulp of Pociluyko to produce the claimed invention. Accordingly, Leithem contended that the examiner’s rejection had been improper.

    The Board agreed with Leithem that Novak only discloses the cold caustic treatment of pulp to produce a wet-laid paper. The Board found that, although Novak itself does not disclose a fluffed pulp, the Novak pulp is a pulp that “may be fluffed for use in an absorbent core” and that one of skill in the art “would have had reason to use this pulp as a fluffed pulp in an absorbent product such as Pociluyko.” The Board therefore sustained the examiner’s rejection of claim 104 as obvious.

    Leithem petitioned the Board for rehearing, contending that the Board had relied on a new ground of rejection in affirming the examiner because the examiner had not found that Novak’s caustic extracted pulp could be mechanically fluffed and used in Pociluyko’s product. Thus, according to Leithem, the Board relied on a new ground of rejection when it affirmed the examiner on the basis that Novak’s pulp is not fluffed, but could be dried, fluffed, and then used as disclosed in Pociluyko.

    The Board disagreed, and Leithem appealed to the Federal Circuit.

    The Circuit Court’s Opinion

    In its decision, the circuit court explained that an applicant for a patent who appealed a rejection to the Board was entitled under the federal Administrative Procedure Act to notice of the factual and legal bases on which the rejection was based. Moreover, the circuit court added, the Board’s rules provided that when the Board relied on a new ground of rejection not relied on by the examiner, the applicant was entitled to reopen prosecution or to request a rehearing.

    The circuit court acknowledged that the Board might make additional findings of fact based on the Board’s own knowledge and experience to “fill in the gaps” that might exist in an examiner’s evidentiary showing. The Board’s power to do so was narrow, however, and when reliance on additional facts changed the thrust of the rejection, the Board’s action did “everything but cry out for an opportunity to respond.”

    In this case, the Federal Circuit found, the examiner cited Novak as teaching a fluff pulp. Leithem appealed this rejection to the Board on the basis that Novak’s pulp is not fluffed, that Novak does not teach fluffing, and that Novak only teaches wet-laid paper. The Federal Circuit then observed that although the Board agreed with Leithem, it instead affirmed the examiner’s rejection by finding that Novak’s pulp “may be fluffed.” According to the Federal Circuit, the “new facts” concerning the scope and content of the prior art were the principal evidence on which the Board’s rejection was based. In the Federal Circuit’s opinion, Leithem would “certainly have responded differently” had the examiner’s original rejection been premised on Novak teaching pulp that “may be fluffed” as opposed to teaching fluff pulp that could be substituted directly into the diaper of Pociluyko, but Leithem had never been given an opportunity to respond to this rejection.

    The Federal Circuit then concluded that “fairness” dictated that Leithem should be afforded an opportunity to respond to the Board’s new rejection.