Ex Parte Quist

When an appellant argues on appeal that the examiner erred in finding obviousness based in part on proffered secondary-considerations evidence, the Board must review the obviousness conclusion anew on the totality of the record, weighing evidence for and against by a preponderance. Declaration evidence of secondary considerations is entitled to substantial weight only if the appellant shows a sufficient nexus, meaning the evidence is coextensive with the claimed features as the claim is reasonably construed. On rehearing, arguments that were required to be made in the briefs but were raised for the first time in the rehearing request are waived absent good cause. The decision follows and applies Ex Parte Frye, Appeal 2009-006013 (BPAI Feb. 26, 2010) (Precedential), on the Board's role in reviewing obviousness rejections, and adds the nexus requirement for declaration evidence and the limit on the scope of rehearing. For an examiner defending a rejection, it confirms that a prima facie case followed by "not successfully rebutted" language is not error if the final determination rests on the whole record. For an applicant, it means declaration testimony that is broader than, or not coextensive with, the claim as broadly construed gets little weight. Applicants also cannot add new arguments on rehearing, such as advantages of the process, that the briefs did not make. The Board relied on Simmons Fastener Corp. v. Illinois Tool Works, Inc., 739 F.2d 1573 (Fed. Cir. 1984), Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008), In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992), and Hyatt v. Dudas, 551 F.3d 1307 (Fed. Cir. 2008). LEGAL TEST OR STANDARD: Nexus: the declaration must have a sufficient nexus to the claimed subject matter to be given substantial weight. Secondary considerations may presumptively be attributed to the invention only where the marketed product embodies the claimed features and is coextensive with them. Review: if the appellant argues the examiner erred in obviousness based in part on secondary-considerations evidence, the panel must consider anew all relevant evidence of obviousness, both for and against, on the totality of the record by a preponderance of the evidence. Rehearing: the request must state with particularity the points misapprehended or overlooked under 37 C.F.R. 41.52(a)(1), and arguments required to have been made in the briefs are waived if first raised on rehearing unless good cause is shown. TRIGGERING FACTS: Claim 1 was a process claim using open-ended comprising language. It recited cutting a carrier board and making joining edges, then applying and curing radiation-curable dry acrylic lacquer powder. It was construed broadly to cover a carrier board that already has a coating, and so did not exclude forming joining elements after coating. The Eriksson declaration said no commercial laminate flooring manufacturer ever formed joining elements before applying coatings, and that doing so was not recognized or conventional. That was held not coextensive with the claim as written. Appellants' advantage and wasted-coating arguments first appeared in the rehearing request. They also attacked the original panel's wording (prima facie case, not successfully rebutted) as an improper standard. KEY QUOTE: "In such instances, the Board panel must consider anew all the relevant evidence of obviousness, both for and against, in view of the argument on the issue." (Paper N/A, p. 11) PRIOR PRECEDENT AFFECTED: Follows and applies Ex Parte Frye, Appeal 2009-006013, 2010 WL 889747 (BPAI Feb. 26, 2010) (Precedential), on the Board reviewing contested findings anew on all the evidence and argument. No prior precedential or informative decision is overruled or modified. PRACTICE TIP: When offering declaration evidence of secondary considerations, tie it expressly to the claim as broadly construed, so the testimony is coextensive with the claimed features. Make every argument, including claimed advantages, in the appeal brief or reply brief, because the Board will treat new points in a rehearing request as waived.