Ex parte Janakiraman

Informative decision only: persuasive authority, not binding precedent. When the Board affirms an independent claim as obvious solely because an unchallenged dependent claim was affirmed as obvious (and the examiner never rejected the independent claim under § 103), the affirmance is a new ground of rejection if the Board's claim interpretation was not detailed by the examiner, differs from the examiner's, and implicates different reasoning, so that the appellant lacked a fair opportunity to react. In that situation the Board may, in its discretion and under an "abundance of fairness policy," designate the affirmance a new ground of rejection under 37 C.F.R. § 41.50(b). No prior precedent directly addressed this issue beyond the authorities the decision cites: it follows Ex parte Letts for the Board's discretionary "abundance of fairness policy" and applies the Kronig "basic thrust" test. For the examiner, an implied § 103 rejection of an independent claim based on a dependent claim's affirmance is vulnerable to recharacterization as a new ground when the Board's claim reading departs from the examiner's. For the appellant, a rehearing request that only asserts a phantom rejection and denial of fairness can secure the options of 37 C.F.R. § 41.50(b)(1), here reopening prosecution within two months, but not further relief under § 41.50(b)(2) because the merits were not argued. The Board relied on Ormco Corp. v. Align Technology, Inc., 498 F.3d 1307 (Fed. Cir. 2007), for the point that broader claims must be obvious if dependent claims are, and on In re Kronig, 539 F.2d 1300 (CCPA 1976), and In re Hughes, 345 F.2d 184 (CCPA 1965), for the new ground analysis. LEGAL TEST OR STANDARD: There is no new ground of rejection when the basic thrust of the rejection remains the same such that an appellant has been given a fair opportunity to react to the rejection (In re Kronig). A rejection constitutes a new ground if the rationale changes the thrust of a prior rejection. Where issues may be vastly different and call for different types of evidence (In re Hughes), and a procedural misunderstanding is possible, the Board at its discretion may follow an abundance of fairness policy (Ex parte Letts). TRIGGERING FACTS: The Board affirmed § 103 rejection of dependent claim 4 (Berckmans and W3C), reversed the examiner's § 102(e) rejection of claim 1 and others, and then held claim 1 obvious under Ormco because narrower claim 4 was obvious. The examiner had not rejected claims 2, 3, 6-10 and others under § 103. The Board's claim interpretation was not previously detailed by the examiner, differed from the examiner's, and implicated different reasoning. Appellants did not contest the merits of the Ormco reliance or of claim 4. KEY QUOTE: "There is no new ground of rejection when the basic thrust of the rejection remains the same such that an appellant has been given a fair opportunity to react to the rejection." (p. 5) PRIOR PRECEDENT AFFECTED: Follows Ex parte Letts, 88 USPQ2d 1854, 1859 (BPAI 2008), on the abundance of fairness policy. Applies In re Kronig, 539 F.2d 1300, 1302-03 (CCPA 1976), In re Hughes, 345 F.2d 184, 185-186 (CCPA 1965), and Ormco Corp. v. Align Technology, Inc., 498 F.3d 1307 (Fed. Cir. 2007). No prior Board informative or precedential decision is overruled. PRACTICE TIP: If the Board affirms an independent claim on a dependent claim's obviousness without an examiner rejection, request rehearing under 37 C.F.R. § 41.52(a) arguing that the claim reading and reasoning differ from the examiner's and that you lacked a fair opportunity to respond, and be ready to reopen prosecution under § 41.50(b)(1) within two months.