Today in Sawstop Holding LLC v. Vidal, 2021-1537, 2021-2105 (Fed. Cir. 9/14/2022), the Federal Circuit held that 35 USC 154(b)(1)(C)(iii) (PTA "C" delay), requires reversal of all rejections of a claim subject to the review, and that the same claim issue (with no substantive amendments). This holding includes relevant statutory constructions, and was decided strictly on the plain language of the statute.
The Federal Circuit also held that non-statutory provisional obviousness-type double patenting rejection is subject to judicial review.
Sawstop argues that the remaining rejection did not affect “patentability” because it was non-statutory (because it was an obviousness-type double patenting rejection) and provisional (because the obviousness-rendering reference was an application rather than a patent). Citing In re Mott, 539 F.2d 1291, 1296 (C.C.P.A. 1976), Sawstop argues that these characteristics mean that the rejection did not have any force or effect until the obviousness-rendering reference issued and was thus not a rejection that it could appeal or the District Court could affirm or reject. Sawstop is incorrect. [Sawstop Holding LLC v. Vidal, 2021-1537, 2021-2105 (Fed. Cir. 9/14/2022).]
Best regards, Rick Neifeld, Ph.D., Patent Attorney
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032-1479, United States