Background
David J. Gomez appealed from a decision of the Patent Trial and Appeal Board concerning Patent Application No. 17/375,841.
During the Federal Circuit proceedings, the parties jointly moved to remand the case. Their motion stated that the Board had relied on a reference that was not prior art when rejecting certain claims in Gomez’s patent application.
The Court’s Holding
The Federal Circuit granted the joint motion and remanded the case to the U.S. Patent and Trademark Office for further consideration consistent with the motion and the court’s order.
The court did not decide the patentability of Gomez’s claims or direct a particular outcome on remand. It ordered each side to bear its own costs and issued the nonprecedential order as the mandate on September 21, 2026.
Key Takeaways
- The PTAB’s reliance on a reference that was not prior art prompted the parties to seek remand jointly.
- The Federal Circuit granted remand without resolving the merits of the underlying claim rejections.
- The USPTO must reconsider the matter consistently with the joint motion and the court’s nonprecedential order.
Why It Matters
The order underscores that a patent rejection cannot properly rest on a reference that does not qualify as prior art. When that problem is acknowledged during an appeal, remand allows the agency to reconsider the affected claims under the correct prior-art framework.