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McAndrews, Held & Malloy Secures Victory for Stepan Company

Date: October 12, 2011 || Client Successes

McAndrews, Held & Malloy announced today that it secured a victory before the U.S. Court of Appeals on behalf of its client, Stepan Company.  The case involves Stepan’s U.S. Patent Number 6,359,022 (‘022), which covers resin blends that create foams used in the manufacturing of thermal insulation boards placed inside the walls of buildings.  On October 5, the Federal Circuit ruled that the U.S. Patent and Trademark Office’s (PTO) Board of Patent Appeals and Interferences violated Stepan’s notice rights under the Administrative Procedure Act, when it affirmed an examiner’s ruling on reexamination that all claims in the company’s patent were invalid without designating a new ground of rejection.  Specifically, the Board rejected the patent application claims as obvious in view of the same prior art, though under a different statutory subsection.

McAndrews attorneys then appealed to the Federal Circuit, which held that the Board’s reliance on 35 USC 103/102(a), as a new basis for rejection afforded Stepan the option to return to examination before the Examiner to address the Board’s issues with Stepan’s date-of-invention proof.  According to the October 5 opinion, Stepan is now free to further pursue its patent application.    

“Fundamentally, the decision rests upon the constitutional guarantee of due process, which is expressly imposed by both the Administrative Procedure Act, as well as Patent Office regulations,” said Thomas J. Wimbiscus.  “Patent applicants are entitled to notice of the precise grounds for which their claims have been rejected, and an opportunity to respond to those grounds, and the Board of Appeals cannot justify an improper rejection by an Examiner under different reasoning, even if it involves the same prior art.” 

Stepan Company was represented by McAndrews attorneys Thomas J. Wimbiscus, George F. Wheeler and Dennis Jaskoviak.