Board raises new ground of rejection on a single piece of art that had been cited in combination by the Examiner

February 2, 2012 – Blog Post

In Ex parte Sciulli et al.; appeal no. 2009-013096; application no. 10/114,920, the Board reviewed the Examiner's obviousness rejections of claims to orifice mounts for use in high-pressure fluid jet systems. During prosecution, the Applicant argued that the cited references failed to disclose the claimed dimensions of the orifice mounts and rebutted the Examiner's obviousness rejection by arguing that these claimed dimensions are critical for improved performance over the orifice mounts of the prior art. The Board dismissed these arguments and entered a new ground of rejection under 37 CFR 41.50(b).

Claim 1 of the appeal relates to orifice mounts having (inter alia) a radial distance (13) from a central axis of the mount (14) to the midpoint of the frusto-conical out surface (15) of 0.11 to 0.19 inches and a vertical distance (16) between the midpoint (15) to a top surface of the mount (17) of 0.15 to 0.3 inches. See Fig. 2 of the application, which illustrates a claimed embodiment and these dimensions:

The Examiner cited US 5,643,058 ("Erichsen") as the primary reference against the claims and included several secondary references in the rejections. Erichsendisclosed the claimed angle formed by the opposite sides of the frusto-conical surface (55-80°) but failed to disclose or suggest the claimed radial and vertical distances (conceded by the Board). The Applicant relied on this deficiency of Erichsen in asserting the non-obviousness of the claimed orifice mounts over the prior art. The Board concluded, however, that it would have been obvious to adjust the radial and vertical distances of the prior art as needed.

The Applicant also urged the Board to consider several advantages that the claimed orifice mounts exhibit over prior art orifice mounts. These advantages were described in the specification, and a Declaration of one of the inventors was filed during prosecution which further discussed these advantages. The Board found these arguments unconvincing, because, in their view, the Applicant failed to disclose any objective evidence that linked the claimed dimensions to the advantages described in the specification and Declaration. Thus, the Board concluded: "[w]here the benefits result from something different than what is both claimed and novel, no nexus to the merits of the invention is established." See In re Kao, 98 USPQ2d 1799 (Fed. Cir. 2011).

Last, the Board considered that Erichsen was sufficient by itself to support an obviousness rejection of the claims and therefore entered this new ground of rejection. In discussing new grounds of rejections, the Federal Circuit recently stated that the Applicant must have "a full and fair opportunity to litigate the Board's actual basis of rejection," and therefore "the administrative validity proceedings before the [PTO] should be allowed to continue." In re Stepan Co. 100 USPQ2d 1489 (Fed. Cir. 2011). Interestingly, even though Erichsen was the primary reference cited against the claims in the Examiner's obviousness rejection, the Board considered that an obviousness rejection of the claims in view of Erichsen alone must be entered as a new ground of rejection to give the Applicant "a full and fair opportunity" to address this ground of rejection.