In Re Leithem
661 F.3d 1316
| Fed. Cir. | 2011Background
- Leithem et al. appeal a Board decision sustaining a §103 rejection of claim 104 in the ‘585 Application for an absorbent diaper with non-crosslinked fluff pulp obtained via cold caustic extraction.
- The examiner’s rejection relied on Pociluyko disclosing a diaper with fluff pulp and Novak disclosing cold caustic extraction and a method of making fluff pulp, with the Board later finding Novak’s pulp may be fluffed.
- Leithem argued Novak teaches wet-laid paper, not fluffed pulp, and thus cannot be incorporated as disclosed by Pociluyko; the Board’s affirmation rested on a new understanding that Novak’s pulp is fluffed.
- The Board concluded Novak discloses a pulp that may be fluffed, and relied on this to justify modifying Pociluyko’s diaper—a basis Leithem did not have opportunity to address.
- Leithem petitioned for rehearing; the Board then clarified that its rejection rested on the notion Novak’s pulp may be fluffed, not on Novak’s wet-laid paper.
- The Federal Circuit vacated and remanded to provide Leithem a full opportunity to respond to the Board’s new rejection in the first instance.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the Board relied on a new ground of rejection | Leithem asserts Novak’s pulp is not fluffed; Board’s new rationale changes the rejection. | Office contends Novak teaches fluffed pulp and the Holland beater equates to fluffing. | Remanded for fair opportunity to respond to the new ground. |
| Whether Leithem was afforded notice and opportunity to respond | The examination relied on a different rationale than the Board’s final rejection. | Board’s rejection consistent with examiner’s basis; no new ground. | Remand required to ensure due process. |
Key Cases Cited
- In re Kumar, 418 F.3d 1361 (Fed. Cir. 2005) (new grounds require fair notice and opportunity to respond when Board adds facts or rationale not in examiner's view)
- In re Kronig, 539 F.2d 1300 (CCPA 1976) (new grounds avoided if thrust of rejection remains the same and applicant can respond)
- In re Ahlert, 424 F.2d 1091 (CCPA 1970) (Board may fill gaps with its own findings, but not to shift the rejection’s thrust without opportunity to respond)
- In re Moore, 444 F.2d 574 (CCPA 1971) (Board may supplement examiner’s evidence, but not alter the rejection’s fundamental basis without notice)
- In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000) (APA standards for reviewing Board decisions; reasonableness of agency action)