Inre: Biedermann, 733 F.3d 329

Background

The ’057 application claims a bone-screw holding device with a U-shaped holding portion having inner threads whose flanks enclose a 90° angle to the holding-portion axis (square/flat threads) and a locking element with an outer thread; tightening produces an axial force that prevents leg splaying.
Examiner rejected claims as obvious under 35 U.S.C. § 103 over Cotrel (disclosing a U-shaped internally threaded holding portion and locking screw) and Steinbock (discussing thread forms, grouping square, Acme, and buttress threads), with Ortloff cited for gaps between crest and root.
Examiner’s articulated rationale: limited thread-profile choices and Steinbock’s teaching that square threads are the most efficient for load transfer, so substituting a square thread into Cotrel would be obvious.
On appeal the Board affirmed but relied for the first time on (1) the Machinery’s Handbook to equate Cotrel’s “saw-tooth” thread with buttress threads, (2) Steinbock’s grouping of square and buttress threads to support interchangeability, and (3) avoidance of splaying (radial force reduction) as the principal reason to substitute square threads.
Applicant (Biedermann) argued the Board issued a new ground of rejection by adopting different facts and reasoning (interchangeability/splaying and reliance on the Handbook) than the examiner’s efficiency rationale, depriving them of notice and an opportunity to respond.
The Federal Circuit vacated and remanded, holding the Board had relied on new factual findings and rationales (including the Handbook and splaying/ machinability reasoning) that changed the thrust of the rejection and thus constituted a new ground requiring re-opening prosecution or rehearing procedures.

Issues

Issue	Biedermann's Argument	Government's Argument	Held
Whether the Board issued a new ground of rejection by adopting different facts/rationale than the examiner	Board adopted new factual findings (Cotrel uses saw-tooth/buttress; Steinbock groups square and buttress; square threads avoid splaying), changing the rejection’s thrust; insufficient notice	Board merely elaborated/explained examiner’s rejection and responded to appellant’s arguments; no new ground	Held: Board issued a new ground — vacated and remanded because Board relied on new facts/rationales distinct from examiner’s efficiency rationale
Whether citation of Machinery’s Handbook and discussion of machinability constituted new grounds	Handbook was used substantively to link thread terms and played a significant role; machinability was a new rationale	Handbook was a technical dictionary confirming terminology; machinability just an additional factor consistent with examiner’s rationale	Held: Handbook and machinability treatment materially contributed to a new ground of rejection; Board could not rely on them without giving applicant an opportunity to respond

Key Cases Cited

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (framework for obviousness inquiries and need for articulated reasoning to combine prior-art teachings)
Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966) (Graham factual inquiries for obviousness)
In re Stepan Co., 660 F.3d 1341 (Fed. Cir. 2011) (Board may not rely on new factual findings or rationale without providing applicant notice)
In re Leithem, 661 F.3d 1316 (Fed. Cir. 2011) (Board issued new ground when it made findings not made by examiner that changed rejection’s thrust)
In re Jung, 637 F.3d 1356 (Fed. Cir. 2011) (Board may further explain examiner’s rejection without creating a new ground if it does not rely on new facts)
Dickinson v. Zurko, 527 U.S. 150 (1999) (PTO subject to APA review requirements)