In re Leithem

• Decision Date: 19 September 2011
• Docket Number: No. 2011–1030.Serial No. 09/863,585.,2011–1030.Serial No. 09/863,585.
• Citation: 100 U.S.P.Q.2d 1155,661 F.3d 1316
• Parties: In re Phyllis LEITHEM, Charles A. Kremers, W. Paul Harrell, Stephen Lewis, Karl D. Sears, Quan He, and Peter R. Abitz.
• Court: U.S. Court of Appeals — Federal Circuit

100 U.S.P.Q.2d 1155

661 F.3d 1316

In re Phyllis LEITHEM, Charles A. Kremers, W. Paul Harrell, Stephen Lewis, Karl D. Sears, Quan He, and Peter R. Abitz.

No. 2011–1030.Serial No. 09/863,585.

United States Court of Appeals, Federal Circuit.

Sept. 19, 2011.

William J. Spatz, Kramer Levin Naftalis & Frankel LLP, of New York, New York, argued for appellants. With him on the brief was Jean–Paul Ciardullo.

Mary L. Kelly, Associate Solicitor, United States Patent and Trademark Office, of Alexandria, Virginia, argued for appellee. With her on the brief were Raymond T. Chen, Solicitor and Frances M. Lynch, Associate Solicitor.

Before NEWMAN, BRYSON, and LINN, Circuit Judges.

LINN, Circuit Judge.

Phyllis Leithem et al. (collectively, “Leithem”) appeal the decision of the Board of Patent Appeals and Interferences (“Board”) sustaining the unpatentability of the sole pending claim of U.S. Patent Application No. 09/863,585 (filed May 16, 2001) (“the '585 Application”) for obviousness. Ex parte Leithem, No.2008–0222, 2008 WL 4105790 (B.P.A.I. Sept. 4, 2008) (“ Decision ”), reconsideration denied, (B.P.A.I. July 15, 2010) (“ Reconsideration ”). Because the Board, in affirming the examiner's rejection, relied on a new ground of rejection, this court vacates and remands.

I. Background

Leithem's patent application discloses an improved personal hygiene device (“diaper”). Traditional diapers are constructed using an absorbent core of dry shredded wood fiber pulp, known as fluff pulp, interposed between a water barrier sheet and a permeable layer that allows liquid to pass through to the absorbent fluff pulp core. For absorption intensive devices, such as baby diapers, the fluff pulp is often pretreated with a chemical cross-linking agent. Chemical cross-linking increases the wet stiffness of the fluff pulp so that it retains its bulk and pore volume when wet, thereby enhancing its absorbency and preventing “wet collapse.” Appellant Br. 4, 18. Leithem contends that prior to the discovery disclosed in the '585 Application, it was not believed to be possible to achieve the absorption, liquid retention, softness, and pad integrity of modern diapers without using chemically cross-linked fluff pulp.

Leithem sought to invent a diaper that would avoid the expense of using chemically cross-linked fluff pulp while still retaining the superior absorbency properties characteristic of a cross-linked fluff pulp. Leithem discovered that when wood pulp is extracted with a caustic substance at low temperature and is then dried and fluffed, the resulting fluff pulp is imbued with superior absorbency properties without the need for the extra step and expense of chemically cross-linking the fluff pulp.

Independent claim 104 is pending and on appeal. Claim 104 recites:

104. An absorbent personal hygiene device comprising:

a layer that allows liquid to pass,

a water barrier sheet,

an absorbent core interposed between said layer and said sheet, the absorbent core containing

at least about 25% of fluffed wood fiber pulp, wherein said fluffed wood fiber pulp comprises

wood fiber pulp that has been cold caustic extracted and fluffed by mechanical action and is without chemical crosslinking.

The examiner rejected the claim as obvious under 35 U.S.C. § 103 over U.S. Patent No. 3,658,064 (“Pociluyko”) in view of U.S. Patent No. 2,083,575 (“Novak”). Office Action of June 25, 2004 (“ Office Action ”), at 2–4. The examiner explained that Pociluyko discloses a diaper satisfying every element of claim 104 except that Pociluyko was “silent as to the method of manufacturing the fluff pulp.” Id. at 3. In other words, Pociluyko did not disclose using a fluff pulp that satisfied the cold caustic extraction limitation. The examiner then explained that Novak discloses cold caustic extraction of wood pulp and “a method of making fluff pulp.” Id. at 3–4. According to the examiner, “[i]t would have been obvious to one having ordinary skill in the art ... to modify the invention of Pociluyko with a fluff pulp made by the method taught in Novak.” Id. at 3.

On appeal to the Board, Leithem argued that “Novak does not teach that his pulp is fluffed.” Supp. Appellant Br. of Aug. 18, 2004 (“Supp.Br.”), at 6. Instead, Leithem observed that the pulp product of Novak is a wet-laid paper and not a fluff material as the examiner alleged. Id. Because Novak describes the manufacture of wet-laid paper, not dry shredded fluff, Leithem argued that those skilled in the art could not simply substitute the wet-laid paper product of Novak for the dried fluff pulp of Pociluyko to produce the claimed invention. Id. Accordingly, Leithem contended that the examiner's § 103 rejection was improper.

The Board, in its initial decision, agreed with Leithem that Novak only discloses the cold caustic treatment of pulp to produce a wet-laid paper. Decision at 8. The Board found that, while Novak itself does not disclose a fluffed pulp, “the Novak pulp is a pulp which may be fluffed for use in an absorbent core.” Id. The Board reached this conclusion because Novak's goal was to create a more absorptive paper and one of skill in the art “would have had reason to use this pulp as a fluffed pulp in an absorbent product such as Pociluyko.” Id. at 9. The Board therefore sustained the examiner's rejection of claim 104 as obvious.

Leithem then petitioned the Board for rehearing. Leithem contended that the Board, in affirming the examiner, relied on a new ground of rejection. Specifically, Leithem explained that the examiner did not find that the caustic extracted pulp of Novak could be mechanically fluffed and used in the product of Pociluyko. Instead, the examiner simply found that Novak's wet-laid pulp was itself already a fluff pulp. Thus, according to Leithem, the Board relied on a new ground of rejection when it affirmed the examiner on the basis that Novak's pulp was not fluffed, but could be dried, fluffed, and then used as disclosed in Pociluyko. Req. for Reh'g of Nov. 3, 2008, at 3.

The Board disagreed. The Board initially observed that both the examiner and the Board had rejected the claim under 35 U.S.C. § 103 over Novak and Pociluyko. Reconsideration at 3. Although the Board acknowledged Leithem's argument that Novak does not teach fluffing, the Board reiterated that the examiner found that Novak's pulp was fluffed. Id. (noting that “Novak further discloses fluffing,” “the Examiner again regarded the Novak pulp as fluffed,” and “the pulp of Novak was a ‘fluff pulp’, not the felt.”) Because the examiner's rejection referred to “pulp,” Leithem's appeal brief to the Board referred to “pulp,” and the Board referred to “pulp” in its initial decision, the Board determined that the thrust of the rejection had not changed and denied Leithem's request for rehearing. Id. at 4. Leithem filed a timely appeal and this court has jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

II. Discussion

This court applies the standards set forth in the Administrative Procedure Act (“the Act”) at 5 U.S.C. § 706 in reviewing decisions from the Board. See In re Gartside, 203 F.3d 1305, 1311 (Fed.Cir.2000). Under 5 U.S.C. § 706, this court “shall ... set aside agency action ... found to be ... not in accordance with law.” 5 U.S.C. § 706; In re McDaniel, 293 F.3d 1379, 1385 (Fed.Cir.2002).

Leithem argues that the Board relied on a new ground of rejection in affirming the examiner's rejection. Leithem contends that the examiner rejected claim 104 on the basis that Novak teaches a cold caustic extracted fluff pulp, even though Novak only teaches making wet-laid paper from cold caustic extracted pulp. Appellant Br. 17. Fluff pulp is a dried product resembling a ball of cotton, whereas wet-laid paper is a liquid slurry of water and wood pulp. Leithem asserts that fluff pulp is quite different than wet-laid paper, both structurally and in its absorptive properties. Id. Leithem agrees that the wet-laid paper of Novak could be dried and then shredded in a hammermill to make fluff pulp, but points out that this was not the basis of the examiner's rejection. Leithem argues that the Board relied on a new rationale for its rejection by finding that it would have been obvious to take Novak's cold caustic extracted pulp, dry it, shred it into a fluff, and then combine it with the diaper of Pociluyko. Id. at 19, 21–23.

The United States Patent and Trademark Office (“Office”) responds that “Novak plainly teaches fluffed cold caustic-extracted wood pulp.” Appellee Br. 12. The Office also contends that “Novak teaches that his cold caustic-extracted wood pulp may be used as a fluff.” Id. at 8, 13. The Office asserts that Novak teaches “fluffing” because it discloses the use of a Holland beater. Id. at 13. According to the Office, the process of beating in a Holland mill equates to the process of fluffing in a hammermill. Id. Thus, because the Board and the examiner based their rejections on these shared findings, the Office argues that the Board did not impose a new ground of rejection. Id. at 14.

In accordance with the Act, the Office must assure that an applicant's petition is fully and fairly treated at the administrative level. See In re Kumar, 418 F.3d 1361, 1367 (Fed.Cir.2005) (citing Dickinson v. Zurko, 527 U.S. 150, 154, 119 S.Ct. 1816, 144 L.Ed.2d 143 (1999)). The Board's statutory authority requires the Board to review, on appeal, adverse decisions of the examiner. 35 U.S.C. § 6(b). Under the Act, an applicant for a patent who appeals a rejection to the Board is entitled to notice of the factual and legal bases upon which the rejection was based. 5 U.S.C. § 554(b)(3). The Board's rules are in accord and provide that when the Board relies upon a new ground of rejection not relied upon by the examiner, the applicant is entitled to reopen prosecution or to request a rehearing. See 37 C.F.R. § 41.50(b). The Board need not recite and agree with the examiner's rejection in haec verba to avoid issuing a new ground of...