Nigel Parker, et al. v. Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trademark Office

In Dickinson v. Zurko, 527 U.S. 150 (1999), this Court held that The United States Patent Office must support rejection with substantial evidence. See Dickinson at 152, citing 5 U.S.C. § 706(2)(E). In the instant case, The Patent Office rejects Petitioners’ patent claims based on either of two alleged antedating publications. Neither document, however, is of record. This appeal thus raises simple yet fundamental questions of agency overreach: Whether the “substantial” evidence required to support agency action under 5 U.S.C. § 706(2)(E) must be evidence of record? Whether agency rejection is “arbitrary” or “capricious” under 5 U.S.C. § 706(2)(A) if supported only by alleged evidence which is not of record and which the agency has not in fact considered? Whether a document which is not publicly available is a “publication” under 35 U.S.C. § 102(b)?