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In re Wheeler on anticipation, scope of review of BPAI decision

By Lawrence B. Ebert, Esq.

In Wheeler, a BPAI finding of anticipation was reversed and remanded for appropriate further proceedings.

The BPAI's factual findings were reviewed to determine whether they are supported by substantial evidence. See e.g., In
re Berger, 279 F.3d 975, 980 (Fed. Cir. 2002), and here substantial evidence was lacking.

An important issue was the scope of review. The CAFC noted:

Our appellate review is limited to the grounds relied on by the agency. See SEC
v. Chenery Corp., 332 U.S. 194, 196 (1947) (?[A] reviewing court, in dealing with a
determination or judgment which an administrative agency alone is authorized to make,
must judge the propriety of such action solely by the grounds invoked by the agency. If
those grounds are inadequate or improper, the court is powerless to affirm the
administrative action by substituting what it considers to be a more adequate or proper
basis.?).

Full post as published by IPBiz on December 21, 2008 (boomark / email).