In re Phyllis Leithem, Charles A. Kremers, W. Paul Harrell, Stephen Lewis, Karl D. Sears, Quan He, and Peter R. Abitz

Applicants must have an opportunity to respond to the thrust of a patentability rejection.

Opinion (Linn): The Board of Patent Appeals and Interferences (the "Board") affirmed an examiner's rejection, based on obviousness, of U.S. Patent Application No. 09/863,585 belonging to Phyllis Leithem et al. (collectively "Leithem"). One prior art reference taught Leithem's diaper, but lacked a manufacturing method, while another reference taught "making wet-laid paper from cold caustic extracted pulp." Leithem argued the prior art lacked the key limitation disclosed in the claim at issue: fluffed cold caustic extracted wood pulp. Despite agreeing with Leithem, the Board affirmed the examiner's rejection on new facts. According to 37 C.F.R. §41.50(b), "when the Board relies upon a new ground of rejection not relied upon by the examiner, the applicant is entitled to reopen prosecution or request a rehearing." Thus, the issue becomes, "whether [applicants] have had fair opportunity to react to the thrust of the rejection." The original examiner "never articulated" the Board's findings regarding the prior art. Impermissibly, the Board relied on "facts not found by the examiner regarding the differences between the prior art and the claimed invention" when affirming the rejection. Accordingly, Leithem "was never given an opportunity to respond to [the] rejection." The Court of Appeals for the Federal Circuit VACATED the Board's decision and REMANDED the case, because "the thrust of the Board's rejection differed from that of the examiner's rejection."