On September 19, 2011, Federal Circuit Court of Appeals issued an important precedential decision regarding a patent applicant’s due process rights in an appeal to the Board of Patent Appeals and Interferences (“BPAI”). Kramer Levin’s client Rayonier Inc. had sought to patent an invention which enables the manufacture of highly absorbent personal hygiene articles, such as diapers, using dry shredded/fluffed caustic extracted wood pulp instead of more expensive chemically cross-linked fluff pulp. The patent Examiner rejected Rayonier’s application as obvious based on the erroneous conclusion that a patent to Novak taught that fluffed caustic extracted wood pulp was highly absorbent. Rayonier appealed this rejection to the BPAI. In ruling on this appeal, the BPAI conceded that the Examiner had misconstrued the Novak patent, but nevertheless sustained the Examiner based on its own different interpretation of Novak. In a rehearing request, Rayonier asked the BPAI to consider arguments and evidence rebutting its new rejection or remand the application to the Examiner so that he could do so. The BPAI refused, finding that the thrust of its rejection was consistent that of the Examiner. Rayonier appealed to the Federal Circuit arguing that the BPAI’s refusal to consider evidence and argument responsive to its new rejection violated Rayonier’s due process rights under the Administrative Procedure Act. The Federal Circuit sustained Rayonier’s appeal finding that the BPAI’s reliance of the same statutory basis and the same prior art references as a patent Examiner is insufficient to avoid making a BPAI rejection a new rejection when, as was here the case, the BPAI relies on new facts and rationales not previously raised by the Examiner. The Federal Circuit remanded the patent application to the BPAI and ordered it to allow Rayonier a full opportunity to respond to its new rejection. Kramer Levin’s team consisted of Intellectual Property partner William Spatz and associate Jean Paul Ciardullo.