Case: 22-1166 Document: 13 Page: 1 Filed: 05/26/2022
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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In re: NCH CORPORATION,
Appellant
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2022-1166
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 14/681,777.
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ON MOTION
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Before LOURIE, TARANTO, and HUGHES, Circuit Judges.
PER CURIAM.
ORDER
The Director of the United States Patent and Trade-
mark Office moves to waive the requirements of Federal
Circuit Rule 27(f) and to remand for further proceedings.
NCH Corporation opposes remand.
NCH appeals from the Patent Trial and Appeal Board’s
affirmance of the examiner’s rejections of claims in NCH’s
patent application for lack of written description under
35 U.S.C. § 112(a) and/or as obvious under
35 U.S.C.
§ 103(a). In its opening appeal brief, NCH argues that the
Board failed to address arguments and declaration evi-
dence that NCH provided in its opening brief to the Board
Case: 22-1166 Document: 13 Page: 2 Filed: 05/26/2022
2 IN RE: NCH CORPORATION
to rebut those rejections, which the Board incorrectly
deemed as presented for the first time in NCH’s reply brief.
The Director now acknowledges that the Board mistak-
enly believed the arguments to be newly presented in
NCH’s reply brief, and “[t]hus, the Board’s analysis is in-
complete at this time.” Mot. at 2. The Director therefore
moves to remand for the Board to address NCH’s argu-
ments and declaration evidence in the first instance. It is
within this court’s discretion to remand to allow the agency
to reconsider its previous position. See SKF USA Inc. v.
United States,
254 F.3d 1022, 1029 (Fed. Cir. 2001). We
agree that remand is proper and could preserve party and
judicial resources, and therefore grant the motion.
Accordingly,
IT IS ORDERED THAT:
(1) The motion is granted. The appeal is remanded to
the Board to address NCH’s arguments and supporting ev-
idence and to issue a revised decision. On remand, NCH
should be given an opportunity to raise arguments and ev-
idence it believes the Board failed to consider properly.
(2) Each side shall bear its own costs.
FOR THE COURT
May 26, 2022 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
ISSUED AS A MANDATE: May 26, 2022
