Director Kappos Clarifies BPAI’s Standard of Review of Examiners’ Rejections

Ex Parte Frye, BPAI Appeal 2009-006013 (February 26, 2010) Precedential

Appellant appealed a 102 rejection for an invention directed to shoe having a forwardly-inclined, reverse wedge.  Specifically, it was argued that the Examiner erred in finding that the prior art reference ("Snabb")
taught a "forward section of substantially constant thickness" that "meets the rearward section of the insole 'at a point substantially halfway' with respect to the upper surface or the outsole" as called for in independent claims.

Prior to deciding the case on its merits, the BPAI, together with Director Kappos (who joined as a panel member), declared that

[T]he Board reviews the particular finding(s) contested by an appellant anew in light of all the evidence and argument on that issue.

Filing a Board appeal does not, unto itself, entitle an appellant to de novo review of all aspects of a rejection. If an appellant fails to present arguments on a particular issue – or, more broadly, on a particular rejection – the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection. See, e.g., Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (the Board may treat arguments appellant failed to make for a given ground of rejection as waived); In re Watts, 354 F.3d 1362, 1368 (Fed. Cir. 2004) (declining to consider the appellant's new argument regarding the scope of a prior art patent when that argument was not raised before the Board); In re Schreiber, 128 F.3d 1473, 1479 (Fed. Cir. 1997) (declining to consider whether prior art cited in an obviousness rejection was non-analogous art when that argument was not raised before the Board). Thus, the Board will generally not reach the merits of any issues not contested by an appellant. . . . For example, if an appellant contests an obviousness rejection only on the basis that a cited reference fails to disclose a particular limitation, the Board need not review the other, uncontested findings of fact made by the examiner underlying the rejection, such as the presence of uncontested limitations in the prior art.

Reviewing the prior art reference, the Board found that the relevant point was "too far forward of a halfway point with respect to the upper surface or outsole of Snabb’s shoe to be the 'substantially halfway' point as claimed."

In reversing the Examiner, the Board noted

Our decision is limited to the finding before us for review. The Board does not “allow” claims of an application and cannot direct an examiner to pass an application to issuance. Rather, the Board’s primary role is to review adverse decisions of examiners including the findings and conclusions made by the examiner . . . The Examiner in the present case has not based any of the rejections for our review on a theory that locating the claimed point “substantially halfway” as claimed would have been obvious to a person having ordinary skill in the art at the time of Appellant’s invention in view of the prior art, and thus we take no position on this issue in the present opinion.

Read/download a copy of the decision here (link)

See also, David Kappos' Public Blog: "Ex Parte Frye: BPAI’s Standard of Review of Examiners’ Rejection" (link) ("preserving a complete de novo review on the one hand, while not diverting Board effort into issues not raised by the appellant on the other hand, preserves the right balance between thorough review and administrative efficiency.")