Johnston v. Rea

In a civil action to receive a patent after initial rejection, the applicant may submit new, objective evidence and if that evidence relates to a disputed question of fact the PTO's findings of fact are reviewed de novo. If no new evidence is offered, the PTO's findings are entitled to deference and will only be set aside if the PTO's actions were arbitrary, capricious, an abuse of discretion, or not in accordance with the law.

Opinion (O'Grady): After the Patent and Trademark Office rejected his patent application for obviousness, Scott Johnston ("Johnston") filed a suit seeking a judgment that he was entitled to receive a patent for his invention, which related to a Spirally Formed Pipe. The rejected patent application was a continuation of an earlier application, the rejection of which was affirmed by the Federal Circuit Court of Appeals. The PTO moved for summary judgment. In a civil action to receive a patent, the applicant may submit new, objective evidence and if that evidence relates to a disputed question of fact the PTO's findings of fact are reviewed de novo. If no new evidence is offered, however, the PTO's findings are entitled to deference and will only be set aside if the PTO's actions were arbitrary, capricious, an abuse of discretion, or not in accordance with the law. To overcome the PTO's obviousness determination, Johnston proffered evidence intended to show secondary considerations that would support the conclusion that his invention was non-obvious. Much of this evidence was dependent upon Johnston's own testimony as an expert. Because this testimony was not objective, however, it was rejected by the court. The only objective evidence offered by Johnston were photos and brochures from two companies, and documents relating to the executive summary of another company that purported to show the use of a manufacturing method similar to the method that would be used to produce Johnston's invention. Because Johnston's application was for a patent on the product and not a method for producing the product, the court rejected this evidence as well. Because there was no new, objective evidence the court reviewed the PTO's rejection with deference. Under that standard, the District Court determined that the PTO was entitled to summary judgment.