In Re Stepan Co.
660 F.3d 1341
| Fed. Cir. | 2011Background
- Stepan owns U.S. Patent No. 6,359,022 on polyol-based resin blends and foam-making methods;
- During reexamination, the examiner rejected all claims as anticipated under 35 U.S.C. § 102(b) or obvious under § 103(a);
- The Board affirmed the examiner’s obviousness rejection, relying on Singh as prior art;
- The Board treated Singh as § 102(a) art (not § 102(b)) and found Stepan’s Rule 1.131 Declaration ineffective to antedate Singh;
- Stepan argued the Board relied on a new ground of rejection not raised by the examiner, violating notice and due process; the court reviews de novo a Board’s new-ground determination;
- The court vacates and remands to designate the rejection as a new ground of rejection, giving Stepan opportunity to respond.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Was the Board’s decision a new ground of rejection? | Stepan: Board relied on new facts/justifications not raised by examiner. | PTO: Board’s reasoning was the same obviousness framework, not a new ground. | Yes, it was a new ground of rejection. |
| Did Stepan have adequate notice and opportunity to respond? | Stepan had no notice of the new grounds and lacked a chance to respond. | Stepan had opportunity to address antedating Singh and argued it before the Board. | No adequate notice; due process violation. |
Key Cases Cited
- In re Pacer Tech., 338 F.3d 1348 (Fed. Cir. 2003) (new grounds may be raised by the Board in prosecution under 37 C.F.R. § 41.50(b))
- In re Kumar, 418 F.3d 1361 (Fed. Cir. 2005) (agency must provide full notice of bases of rejection to allow fair litigation)
- In re Kronig, 539 F.2d 1300 (CCPA 1976) (no new ground when examiner’s basis is reused without new facts)
- Dickinson v. Zurko, 527 U.S. 150 (U.S. 1999) (PTO subject to APA notice requirements)