In Re Stepan Company

A rejection by the Board of Patent Appeals and Interferences based on new grounds not considered by the examiner cannot be the final judicial ruling.

Stepan Company (“Stepan”) appealed the finality of the rejection by the Board of Patent Appeals and Interferences (“BPAI”) concerning U.S. Patent No. 6,359,022 (“’022 patent”) assigned to Stepan. The Court of Appeals held that the BPAI had rejected the patent on new grounds and Stepan had the right to reopen prosecution or request a rehearing. The examiner ruled that the patent was anticipated under 35 U.S.C. 102(b). The BPAI found that the ‘022 patent was anticipated by the same reference, but found that it was anticipated under 35 U.S.C. 102(a), which includes publications or inventions patented more than one year prior to the date of the application. The Court of Appeals stated that the BPAI must give an applicant notice of new grounds of rejection so the applicant has a chance to respond to the new grounds. In order to give the applicant the required full and fair opportunity to litigate the BPAI’s actual basis of rejection, the BPAI must give notice and provide an opportunity for the applicant to reopen prosecution or request a rehearing. The Court VACATED the Board’s decision and REMANDED with "instructions to designate its rejection as a new ground of rejection."