BPAI has an obligation to raise new rejection to prevent inconsistent results

On cross-appeals from inter partes reexamination, Federal Circuit affirms determination of obviousness regarding certain claims, vacates determination that similar claims were not also obvious, and affirms determination that one claim lacked necessary written description.

Q.I. Press Controls, B.V., v. Lee, __ F.3d __ (Fed. Cir. June 9, 2014) (LOURIE, Bryson, Hughes) (BPAI) (2 of 5 stars)

Obviousness (Cross-appeal): Dealing with Quad/Tech's cross-appeal first, the Fed Cir affirmed the Board's decision that claims 61-72 were obvious in view of the prior art Ross and Sainio references. It rejected Quad/Tech's argument that a person of skill would not have combined these references in the suggested manner and that its evidence of industry praise overcame the Board’s finding.

Written Description (Cross-appeal): The Federal Circuit also affirmed the Board's decision that claim 18 was invalid due to inadequate written description. Neither the specification nor figures of the patent showed a substrate unsupported at the point of illumination as required by the claim language.

Obviousness (Principal appeal): Although it deemed one of the arguments waived, the Federal Circuit nonetheless vacated the Board's finding that claims 1—60 were not obvious, because the Board erred by failing to consider whether the combination of Ross and Sainio might invalidate the claims. Instead, the Board had considered only a proposed combination of other references. The Board should have observed the similarities between the claims and issued a new ground of rejection based on the combination of Ross and Sainio. The Federal Circuit noted "an obligation is owed to the public not to permit inconsistent results when a proper challenge to the inconsistency is made on appeal." Id. at 19. Although the Board does not need to “always apply references that are before it affecting some claims to every other claim on appeal,” it should have done so in this case where “nearly identical claims were found both valid and invalid due to similar combinations of prior art resulting in a Board opinion that was seemingly inconsistent.” Id.

Written Description (Principal appeal): Claims 14 and 24 were not invalid for inadequate written description because the figures of the patents show the claimed subject matter.