It is clear that the Solicitor considers the claimed invention in question as failing to pass muster as patent-eligible subject matter under 35 USC § 101. Under this scenario, which it now confirms in its pleadings, the PTO nevertheless plods forward with a defense of a different rejection instead of simply petitioning the court to remand the case to the PTO for further proceedings under what it now sees as the more appropriate basis for rejection.

With the court pressed with more and more work, it is anomalous that a panel would want to now play “Examiner” and expand its role beyond the statute.

The Comiskey Case

Historically throughout the history of the Federal Circuit and its predecessor Court of Customs and Patent Appeals, it is the Examiner that makes a rejection of claims and the Court, on review of the Examiner via the Board of Patent Appeals and Interferences, reviews the Board’s affirmance of the Examiner (or its confirmation of patentability in an inter partes reexamination that has yet to come to the court). Or, in some cases, the Board sua sponte enters its own rejection as Examiners-in-Chief (restyled as Administrative Patent Judges in the 1990’s).

There is no statutory authority for the court to play examiner and affirm a Board’s denial of patentability on a new ground of rejection.

The PTO’s Ruschig-based Right to Reopen Prosecution: The Chief Judge has no authority to deny an ex parte patent applicant-appellant his claims on what would be a new ground of rejection. This is not his role.

But, the PTO is always free to reopen prosecution even after a court reversal and enter a new ground of rejection as held in In re Ruschig, 379 F.2d 990 (CCPA 1967). Reopening prosecution to enter a new ground of rejection happens all the time, a condition that has existed for generations and perhaps since the nineteenth century origins of the PTO:

“There is nothing unusual, certainly, about an examiner changing his viewpoint as to the patentability of claims as the prosecution of a case progresses, and, so long as the rules of Patent Office practice are duly complied with, an applicant has no legal ground for complaint because of such change in view.” Ruschig, 379 F.2d at 992-93, quoting In re Becker, 101 F.2d 557 (CCPA 1939),quoting In re Ellis, 86 F.2d 412 (CCPA 1936).

Chief Judge Quizzes the PTO for its Failure to Reject under § 101:

Chief Judge Michel: So why did [the PTO fail to make a §] 101 argument?

Associate Solicitor: … Whether or not there should be a § 101 issue here, but for a few different reasons we elected to just go ahead and go forward with the rejections as they are in front of us today. Number 1, we saw that not only are there method claims...

Chief Judge Michel: So you're not saying that you agree that there's no § 101 argument. You think there is a § 101 problem here?

Associate Solicitor: I think if in a hypothetical world, this Court were to reverse this § 103 rejection, I would be not surprised that the Office went back and reevaluated these claims on the § 101.

Chief Judge Michel: Associate Solicitor, is there some sort of implication when an examiner and thereafter the Board does a § 103 analysis that the examiner and later the Board have satisfied themselves that the threshold reauirement of § 101 has been met?

Associate Solicitor: I think by the time a case reaches the Board, the Board believes that it's role is to review what... the examiner's work. And occasionally it will go beyond that and impose a new ground of rejection but typically they ...

Chief Judge Michel: Alright. Well let me rephrase my question. When the examiner does a § 103 analysis and in his answer explains that, is he impliedly saying, I've considered § 101 and I didn't see any problems?

Associate Solicitor: I think it is an examiner's job, you're right, to look at all conditions of patentability, § 102, § 103, 112, and necessarily even include § 101. Now § 101, I think to be fair to the Agency and the thousands of examiners ...

Chief Judge Michel: Well, what about the notion that well, the Agency had it's chance to consider § 101 and some perhaps rather shallow, quick § 101 analyses was impliedly done by the examiner and it's too late for the Agency to now ask this Court to say, well, if you don't like the § 103 rejection, give us another bite at the apple, send it back and let us do a § 101 examination. You had a full opportunity to do § 101 before.

Associate Solicitor: There are cases from this Court and I'm thinking of In re Bass, for example, which specifically hold that as long as an application is within the Agency's jurisdiction, it has the power to reconsider any previous decisions that the Agency has made. So I think for that reason alone, I think the PTO...

Chief Judge Michel: That may be true before it leaves the building, but in this case, it's left the building, it's here and you seem to be saying, if you don't like the § 103, send it back and let us do § 101, and I'm just challenging whether that's fair because you had the chance to do § 101 before and perhaps a very quick and dirty § 101 analysis was done without being documented by the examiner, so why does the Patent Office deserve a second bite of the apple to do § 101?

Associate Solicitor: Well, a couple of reasons. Number one, I think the climate of the law of § 101 and what it is today is a lot different than what it was when this application was filed back in 1999.

An Activist PTO Supports a Federal Circuit New “Rejection”: In violation of the statutory scheme and in violation of the procedures outlined in the Manual, the PTO in its supplemental briefing in Comiskey urges the court to follow the action suggested by the panel at oral argument:

“[H]ad the [PTO] addressed the question of section § 101 in view of the admission by Comiskey's counsel on appeal, it would have found the asserted claims unpatentable as nonstatutory subject matter. A well-considered, precedential decision of this Court would give the [the claim] needed guidance in this area. We recognize that, had the Board below not affirmed the examiner's section § 103 rejections, but instead entered a section § 101 rejection as outlined above, the applicant would have had the opportunity to reopen prosecution. See 37 C.F.R. § 41.50(b). If the Court does not affirm the Board's decision under section § 103, but instead affirms the rejection under section § 101, it will be taking the step equivalent to a new ground for the rejection. Should it do so, it should remand the case to the [the claim] to permit the applicant the procedural rights it would have had before the [the claim].”