## Facts

- Berwyn E. Etter owned U.S. Patent No. 4,133,034, claiming a method and device for collecting and processing utility meter data at meter locations using a portable computer and stored customer profile information.
- A competing inventor, Anthony Goodfellow, was refused a license under the patent and pursued related patent rights.
- Goodfellow sought to provoke an interference by copying Etter’s claims, but the examiner declined because the copied claims were deemed unpatentable over prior art, including Ambrosio (U.S. Patent No. 3,932,730), Azure (U.S. Patent No. 4,016,542), and Lowell (U.S. Patent No. 4,115,870).
- Goodfellow requested ex parte reexamination of Etter’s patent based on the same prior-art patents; the PTO granted reexamination.
- In reexamination, the examiner rejected all claims as obvious under 35 U.S.C. § 103; the PTO Board of Appeals affirmed.
- Etter appealed, arguing that the PTO had to apply 35 U.S.C. § 282’s presumption of validity and require clear and convincing evidence to sustain rejections in reexamination.

## Issues

1. Whether the presumption of validity under 35 U.S.C. § 282 applies in PTO reexamination, requiring the PTO to treat issued claims as presumptively valid and reject them only under a heightened evidentiary standard.
2. Whether substantial evidence supported the PTO Board’s conclusion that all claims were obvious under 35 U.S.C. § 103 over the cited prior art.

## Decision

- The en banc Federal Circuit affirmed the PTO Board’s decision.
- The court held that § 282’s presumption of validity is an evidentiary rule for court proceedings and does not apply in PTO reexamination.
- The court upheld the examiner’s and Board’s § 103 determinations, concluding the obviousness findings were supported by substantial evidence.
- As a result, all claims of the ’034 patent remained rejected in reexamination.

## Legal Principles

- The § 282 presumption of validity is litigation-oriented and does not constrain the PTO when it reexamines issued claims.
- In reexamination, the PTO applies examination standards comparable to original examination, not a “clear and convincing evidence” burden.
- The PTO must establish a prima facie case of unpatentability; once established, the patent owner bears the burden of coming forward with rebuttal argument or evidence.
- On appeal from a reexamination decision, the Federal Circuit reviews whether the Board’s factual findings (including obviousness determinations) are supported by substantial evidence and whether the correct legal standards were applied.

## Conclusion

The Federal Circuit ruled that issued claims under PTO reexamination do not carry § 282’s presumption of validity and affirmed the PTO’s rejection of all claims as obvious under § 103 based on the cited prior art.


In re Etter, 756 F.2d 852 (Fed. Cir. 1985)