In re DBC

Summary

The United States Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board's decision upholding the rejection of claims in DBC's patent reexamination as obvious under 35 U.S.C. § 103. The court held that DBC waived its Appointments Clause challenge to the administrative patent judges by failing to raise it before the Board and declined to consider the issue despite its discretion to do so. The court also upheld the Board's prima facie obviousness determination but held that the Board erred in evaluating whether the commercial embodiment was commensurate with the claims.

Holdings

1. DBC waived its challenge to the appointment of the administrative patent judges by failing to raise the issue before the Board, and the circumstances did not warrant exercising discretion to consider the untimely challenge.
2. The prior art, including JP '442 in combination with the other cited references, established a substantial new question of patentability and supported the Board's prima facie determination that the claims would have been obvious.
3. DBC's evidence of commercial success did not overcome the prima facie case of obviousness because it did not establish a sufficient nexus between the sales and the claimed invention.

Questions Presented

1. Whether DBC waived its constitutional challenge to the appointment of the administrative patent judges by failing to raise the issue before the Board.
2. Whether the prior-art references, including JP '442, established a substantial new question of patentability and a prima facie case that the claims were obvious.
3. Whether DBC's evidence of commercial success was sufficient to rebut the prima facie case of obviousness.
4. Whether the Board's decision should be vacated based on alleged new grounds of rejection.

Disposition

affirmed