PTAB May Be Obliged To Consider New Rejection To Avoid Inconsistent Results

When reviewing an Examiner's decision, the Patent Trial and Appeal Board may issue a new ground of rejection.  37 C.F.R. § 41.77(b).  The Federal Circuit held that there can be an "obligation" to do so when examination leads to inconsistent results and "a proper challenge to that inconsistency is made on appeal."  Q.I. Press Controls, B.V. v. Lee, 111 U.S.P.Q.2d 1272, 1280 (Fed. Cir. 2014).

Q.I. Press was an appeal from an inter partes reexamination of U.S. Patent No. 6,867,423 (the "'423 patent"), owned by Quad/Tech, Inc.  The '423 patent concerns a visual inspection system for printing presses.  The petitioner, Q.I. Press Controls, B.V., appealed the Board's decision that, among other things, claims 1-17 and 19-60 would not have been obvious.  Quad/Tech cross-appealed the Board's decision that claims 61-72 would have been obvious.