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In re Hodges

Fed Cir Reverses Anticipation Rejection Where No Other Outcome Permissible

In re Hodges, F.3d, 2018 WL 817248 (Fed. Cir. Feb. 12, 2018) (Lourie, O’MALLEY, Wallach (CIP/DIP)) (PTAB) (2 of 5 stars)

Fed Cir reverses anticipation rejections and vacates obviousness rejections. Mr. Hodges’ patent related to a valve assembly for use in a pressurized system. The PTAB erred in affirming the examiner’s two anticipation rejections. For the first (concerning “Rasmussen”), the opinion discusses how a certain valve in the reference valve was not “defined by” the drain valve body, as the claims required. As this was the only permissible interpretation of the reference, reversal was warranted per Owens Corning, 873 F.3d 896 (Fed. Cir. 2017). The Board also erred in its second anticipation rejection (concerning “Frantz”) by applying a claim interpretation that was unreasonable in view of the specification, and thus improper per Smith, 871 F.3d 1375 (Fed. Cir. 2017). On appeal, the Patent Office did not defend the Board’s interpretation or anticipation finding regarding Frantz.

The Board’s obviousness determinations lacked adequate evidentiary basis or explanation. The opinion discusses how the Board did not explain how one reference would be modified in view of another so as to reach the claimed invention, but merely relied on its anticipation reasoning. Gartside, 203 F.3d 1305 (Fed. Cir. 2000), and Power Integrations, 797 F.3d 1318 (Fed. Cir. 2015), require the Board to set out its reasoning in sufficient detail to permit meaningful appellate review. On remand the Board can provide further fact findings and explanation.

Partial concurrence: Judge Wallach would not have reversed the PTAB’s Rasmussen anticipation finding, and criticizes the majority for performing a de novo anticipation inquiry. He would have vacated and remanded for further investigation or explanation.

KEYWORDS: INITIAL PROSECUTION; ANTICIPATION (NO); OBVIOUSNESS (NO)