Board’s Failure To Apply Necessary Reference In All Rejections Was Harmless

In re Watts, ___ F.3d ___, ___ USPQ2d ____ (Fed. Cir. Jan. 15, 2004) (Michel, Rader, DYK) (BPAI)
KEY WORDS: WAIVER, HARMLESS ERROR, APELLATE REVIEW
Fed Cir affirms rejection of claims to a system that shuts down part of a CPU when its temperature gets too high and when the CPU “is not processing critical I/O.” At the Board, the applicants admitted that two references disclosed all limitations except the “critical I/O” limitation, and argued that a third reference monitored activities that were not critical I/O activities, and there was no motivation to combine in any event. The applicants repeated these arguments on appeal, and the Fed Cir rejected them. The applicants also argued on appeal that the third reference showed full-speed (not reduced speed) operation for all activities, but with a different delay before returning to low speed, depending on the type of activity. The Fed Cir refused to consider the new argument: “Just as it is important that the PTO in general be barred from raising new arguments on appeal to justify or support a decision of the Board, it is important that the applicant challenging a decision not be permitted to raise arguments on appeal that were not presented to the Board.” The Board failed to apply the third reference against two other claims that contained the “critical I/O” limitation, but the Fed Cir found the Board’s error harmless even though Chenery only allows appellate review of the actual basis for an agency’s ruling: there was no reason to believe the Board’s decision would be different if the case were remanded.
Decision

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