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Do You Have Anything To Prove? Frye Fries A Half-Baked Standard

The recent precedential decision, Ex parte Frye, Appeal No. 2009-006013 (Bd. App. 2010) reversed the Examiner’s rejection of a claim to a shoe. More importantly, the Board emphasized that the Board on appeal “reviews the particular finding(s) contested by an appellant anew in light of all the evidence and argument on that issue.” This seems self-evident, but the de facto standard of review for some time has been that “The burden on….Appellant is to prove reversible error in the Examiner’s rejections.” Ex parte Setbacken.

This is a heavy burden, considering that the Examiner is presumed to have made a final rejection that is supported by a preponderance of the evidence. In re Oetiker, 977 F.2d. 1443, 1445 (Fed. Cir. 1992).

However, the Frye Board also made it clear that its review for error will only be based on the issues presented by appellant, and only those issues: “Specifically the Board reviews the particular finding(s) contested by an appellant anew in light of all the evidence and argument on that issue…the Board will generally not reach the merits of any issues not contested by appellant.” So if you want the benefit of de novo review of an issue, you had better raise it and argue it, or the golden eggs from your client’s legal goose will be cooked on appeal.

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