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Kip Werking

Ex Parte Yudoovsky: Petitions Are (Sometimes?) Unnecessary to Traverse Unauthorized New Grounds of Rejection on Appeal

Posted: Tuesday, Jan 8, 2013 @ 9:15 am | Written by Kip Werking | 2 comments
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Posted in: Guest Contributors, IP News, Articles, Kip Werking, Patent Trial and Appeal Board, Patents, USPTO

The Board of Patent Appeals and Interferences did something fascinating in Ex Parte Yudoovsky. [1] The Board sua sponte declined to consider an unauthorized new ground of rejection—even though the appellant never filed a petition.  In footnote 3 (slip. op. 5), the Board held:

In the “Response to Arguments” section of the Answer, the Examiner, for the first time, expresses an alternative rationale for unpatentability, which is that it would have been obvious to one of ordinary skill in the art to transform the RT2 and RT3 devices of Ohshimo into a single device, citing In re Larson, 340 F.3d 965, 968 (CCPA 1965) (Ans. 10). This abstract rationale is completely unrelated to the claim interpretation rationale of the Examiner’s stated rejections. We decline to consider this new rationale because it implicitly constitutes an unauthorized new ground of rejection. The “Response to Arguments” section of the Answer is not an appropriate place to raise a new rationale for unpatentability.

In other words, the Board refused to consider a new ground of rejection, because the Examiner failed to designate the ground as “new.”