Ex parte Frye

When an appellant contests only particular findings or issues in an examiner's rejection, the Board reviews those contested findings anew for error in light of all the evidence and argument on that issue, but filing an appeal does not entitle the appellant to de novo review of all aspects of the rejection. The Board will generally not unilaterally review or reach the merits of uncontested issues or rejections, and it lacks jurisdiction over petitionable matters (such as drawing objections and refusals to enter amendments) not directly connected with the merits of a rejection of claims. No prior Board precedent is named in the text as being modified; the decision clarifies the Board's scope of review by relying on Federal Circuit authority. For the examiner, the prima facie case serves as an initial procedural mechanism, and the Board need not re-examine uncontested findings underlying a rejection, such as the presence of uncontested limitations in the prior art. For the appellant, the decision means that any finding or rejection not specifically argued in the appeal brief may be treated as waived, so every contested finding must be identified with its basis; the appellant must also use a petition, not an appeal, for objections to drawings or refusal to enter amendments, ideally within the two months of 37 C.F.R. § 1.181(f). The Board grounded this in Oetiker, Piasecki, Hyatt v. Dudas, In re Watts, In re Schreiber, In re Berger, In re Hengehold and In re Mindick. LEGAL TEST OR STANDARD: The examiner bears the initial burden of a prima facie case; the burden of going forward then shifts to the applicant, who must show error in either (1) an underlying finding of fact on which the conclusion of obviousness was based, or (2) the reasoning used to reach the legal conclusion, or submit secondary-considerations evidence. The panel then reviews for error based upon the issues identified by appellant, reviewing the particular finding(s) contested anew in light of all the evidence and argument on that issue. Uncontested aspects are not unilaterally reviewed. Only matters relating at least indirectly to rejection of claims are appealable; others are petitionable under 37 C.F.R. § 1.181. TRIGGERING FACTS: Appellant argued only that Snabb's insole did not meet at a point substantially halfway, so the Board reviewed that single contested finding, which underlay both the anticipation and obviousness rejections. Separately, the examiner objected to the drawings and refused to enter proposed drawing amendments as new matter, appellant never filed a petition, and those matters were unrelated to any rejection before the Board and so outside its jurisdiction. The Board also noted that no rejection rested on a theory that locating the point substantially halfway would have been obvious, and it took no position on that. KEY QUOTE: "Filing a Board appeal does not, unto itself, entitle an appellant to de novo review of all aspects of a rejection." (Appeal 2009-006013, p. 10) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: In the appeal brief, identify and argue every examiner finding and every rejection you contest, with the basis and record citations required by 37 C.F.R. § 41.37(c)(1)(vii), because uncontested issues will generally not be reviewed; and file a timely petition under 37 C.F.R. § 1.181 before the appeal reaches the Board for drawing objections or refusals to enter amendments.