In re Webb - 916 F.2d 1553 (Fed. Cir. 1990)

Rule:

The regulations require that, in making such final rejection, the examiner shall repeat or state all grounds of rejection then considered applicable in the case, clearly stating the reasons therefor. 37 C.F.R. § 1.113(b).

Facts:

Appellants filed a patent application claiming an ornamental design for a grooved femoral hip stem prosthesis. The Board of Patent Appeals and Interferences rejected appellants' application under 35 U.S.C.S. § 171 as being directed to non-statutory subject matter. The Board affirmed the patent examiner's holding that the design was unpatentable because it was purely functional and because it was concealed in normal use. Appellants sought review of the judgment. 

Issue:

Under the circumstances, did the Board correctly reject the appellants’ patent application? 

Answer:

No.

Conclusion:

On appeal, the court held that the issue of the patent design's functionality was not properly before the court because the patent examiners’ final rejection did not clearly specify functionality as a ground for rejection. The court also held that it was inappropriate for the Board to presume that doctors selected implants solely for their functional characteristics, and not their design. Accordingly, the court reversed the judgment of the Board because the normal and intended use of appellants' device was not confined to its final use.