NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

HILL-ROM SERVICES, INC.,

Appellant

v.

JOSEPH MATAL, PERFORMING THE FUNCTIONS 

AND DUTIES OF THE UNDER SECRETARY OF 

COMMERCE FOR INTELLECTUAL PROPERTY 

AND DIRECTOR, U.S. PATENT AND TRADEMARK 

OFFICE,

Intervenor

______________________ 

2016-2199

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 95/002,055.

______________________ 

Decided: December 15, 2017

______________________ 

 LUKE DAUCHOT, Kirkland & Ellis LLP, Los Angeles, 

CA, argued for appellant. Also represented by GARRET A.

LEACH, BRIAN VERBUS, Chicago, IL.

 FARHEENA YASMEEN RASHEED, Office of the Solicitor, 

United States Patent and Trademark Office, Alexandria, 
2 HILL-ROM SERVICES, INC. v. MATAL

VA, argued for intervenor. Also represented by NATHAN 

K. KELLEY, THOMAS W. KRAUSE. 

______________________ 

Before O’MALLEY, HUGHES, and STOLL, Circuit Judges.

O’MALLEY, Circuit Judge.

Hill-Rom Services, Inc. (“Hill-Rom”) appeals from a 

final decision in an inter partes reexamination proceeding, 

in which the Patent Trial and Appeal Board (“Board”) 

affirmed an Examiner’s rejection of claims 1, 14–15, and 

31–32 of U.S. Patent No. 7,669,263 (“’263 patent”). See 

Stryker Corp. v. Hill-Rom Servs., Inc., No. 2015-007927, 

2016 WL 1270198 (P.T.A.B. Mar. 31, 2016) (“Board Decision”). For the following reasons, we reverse in part,

vacate in part, and remand. 

I. FACTUAL BACKGROUND

A. The ’263 Patent

Hill-Rom’s ’263 patent, titled “Mattress Assembly Including Adjustable Length Foot,” is directed to a “patient 

support” apparatus, such as a hospital bed. The specification explains that prior art hospital beds typically contained, among other things, a frame, a mattress, siderails, 

and a “controller configured to control one or more features of the bed.” ’263 patent, col. 1, ll. 48–55. The ’263 

patent, however, purports to provide a more sophisticated 

system in which various bed functions are controlled by 

“modules” that communicate with one another through an 

internal network. Id. col. 10, ll. 39–65; id. col. 29, ll. 39–

42. 

The claimed hospital bed includes a control system, 

which, in turn, includes various controls, interfaces, 

sensors, and actuators that communicate via a plurality of 

modules connected to a network. In one embodiment, the 

network is a “controller area network” (“CAN”) comprising 

a serial data bus. Id. col. 29, ll. 46–51. Modules com-
HILL-ROM SERVICES, INC. v. MATAL 3

municate with each other by transmitting messages on 

the bus, which rebroadcasts the messages to all other 

modules on the network. Id. col. 29, ll. 51–59. The ’263 

patent describes this CAN-based system “as a masterless 

system, wherein each module operates substantially 

autonomously.” Id. col. 30, ll. 40–43.

As issued, the ’263 patent contains twenty claims. 

During reexamination, however, Hill-Rom amended 

certain claims and added others. In particular, Hill-Rom 

amended claim 1 by adding language requiring the control system to “periodically” verify the functionality of 

each module, as shown below: 

1. A patient-support apparatus comprising

a control system including a serial data 

bus and a plurality of control modules 

coupled to the serial data bus, each control module including a microcontroller 

and a transceiver operable to communicate over the serial data bus by sending 

a message out on the serial data bus,

wherein the control system periodically 

verifies the functionality of each module 

present, 

wherein each of the modules is operable to 

monitor communications on the serial 

data bus to determine whether to process a particular message.

J.A. 2490 (emphasis added). Amended claim 14 and its 

dependent claim, claim 15, recite the same “periodically” 

limitation as recited in claim 1. J.A. 2490–91.

Also during reexamination, Hill-Rom added claim 31 

and its dependent claim, claim 32. Claim 31, which 

depends from amended claim 2, requires that the control 

system comprise a CAN, as well as a “module that oper-
4 HILL-ROM SERVICES, INC. v. MATAL

ates as a master for particular communications over the 

control system.”1 J.A. 2490; J.A. 2493 (emphasis added).

On appeal, the parties dispute the meaning of the “periodically” limitation recited in amended claims 1 and 14–

15, as well as the “master module” limitation recited in 

newly added claims 31–32.

B. Overview of the Prior Art

The Board affirmed in relevant part the Examiner’s 

rejections of the claims based on several combinations of 

prior art references. On appeal, however, the parties

focus on two references: (1) U.S. Patent No. 5,771,511, to 

Kummer (“Kummer”), and (2) Holger Zeltwanger, Designing Devices Using CAN and CANopen Buses for Networking, Med. Elecs. Mfg. 64 (1999) (“Zeltwanger”).2 We 

therefore limit our review to only those references.

1. Kummer

The Kummer patent is owned by Hill-Rom and is incorporated by reference in the ’263 patent. Like the ’263 

patent, Kummer discloses an adjustable hospital bed 

comprising a plurality of interconnected modules. Unlike 

the ’263 patent, however, Kummer teaches that its modules are interconnected by “a twisted pair network channel in a peer-to-peer configuration.” Kummer, col. 5, ll. 

25–27; ’263 patent, col. 29, ll. 42–49. Kummer’s peer-to1 Claim 2 is similar to claim 1 but does not include 

the “periodically” limitation, and instead specifies that the 

control system comprises a CAN. J.A. 2490.

2 According to Hill-Rom, “its arguments apply 

equally to all of the anticipation and obviousness rejections maintained by the Examiner” as to all prior art of 

record. Appellant’s Br. 19–20. Neither Hill-Rom nor the 

PTO, however, addresses the other prior art references in 

any meaningful detail.

 
HILL-ROM SERVICES, INC. v. MATAL 5

peer network enables each module “to communicate 

directly with another module in the network without the 

need for a master controller.” Kummer, col. 1, ll. 20–24.

Kummer also teaches that a “diagnostic tool” can be 

used to allow “a remote operator to interrogate every 

module” to perform a diagnostic check. Id. col. 8, ll. 10–

23. Additionally, Kummer discloses that “each module is 

able to perform internal diagnostics,” but specifies that 

such self-diagnostic checks can only be executed “[a]fter a 

module performs its dedicated function”—i.e., when the 

module is not in use. Id. col. 20, ll. 28–32. 

2. Zeltwanger

Zeltwanger generally discloses a CAN for use in medical equipment. In particular, Zeltwanger employs a 

standardized serial bus system to “develop devices that 

can be easily linked to other systems.” J.A. 4236. 

Importantly for this appeal, Zeltwanger describes a 

“standardized communication object” called a “service 

data object” or “SDO.” An SDO is a protocol that allows 

for the transmission of data objects of any size, in contrast 

to other protocols, which generally restrict data transmission to fewer than eight bytes. J.A. 4235. Zeltwanger 

explains that its control system can support an SDO for 

communicating data across the network. 

II. PROCEDURAL BACKGROUND

Third-party Stryker Corporation (“Stryker”) requested 

inter partes reexamination of most claims of the ’263 

patent. The Examiner rejected all challenged claims, 

finding that, inter alia, claim 1 is anticipated by three 

separate references, including Kummer. The Examiner 

also found that claims 1, 14–15, and 31–32 are obvious 

over Kummer and other references, including Zeltwanger. 

The Board affirmed in relevant part. See Board Decision, 

2016 WL 1270198, at *7, 10–14.
6 HILL-ROM SERVICES, INC. v. MATAL

In its decision, the Board construed “periodically,” as 

recited in amended claims 1 and 14–15, to mean “both at 

regular and intermittent or irregular intervals.” Id. at *5 

(emphases added). In so ruling, the Board rejected HillRom’s argument that the claims should be limited to a 

preferred embodiment described in the patent, in which 

each module “periodically” transmits a regular “heartbeat” message to the other modules. Id. at *5–6. The 

Board found that Kummer’s internal diagnostic check 

satisfies the “periodically” limitation under the Board’s 

construction. 

The Board also determined that Zeltwanger’s disclosure of an SDO satisfies the master module limitation 

recited in newly added claims 31–32, in part because HillRom failed to provide “a definition of ‘module’ that would 

exclude an SDO.” Id. at *11. The Board agreed with the 

Examiner that a skilled artisan would have found it 

obvious to “make the diagnostic tool of Kummer an SDO 

module” as taught by Zeltwanger. Id.

Hill-Rom appealed the Board’s decision to this court, 

and the parties subsequently reached a settlement 

agreement pursuant to which Stryker withdrew from the 

appeal. The Director of the U.S. Patent & Trademark 

Office (“PTO”) thereafter intervened under 35 U.S.C. 

§ 143. We have jurisdiction under 28 U.S.C. 

§ 1295(a)(4)(A).

III. DISCUSSION

Hill-Rom raises two principal arguments on appeal. 

First, with regard to claims 1 and 14–15, Hill-Rom argues

that the Board erred by construing “periodically” to 

encompass both regular and irregular verification checks. 

According to Hill-Rom, the term “periodically” should be 

limited to regular checks, which Kummer does not disclose. Second, with regard to claims 31–32, Hill-Rom 

argues that the Board erred both by interpreting the 

master module limitation to encompass non-physical 
HILL-ROM SERVICES, INC. v. MATAL 7

objects, and by finding that Zeltwanger’s non-physical 

SDO is a master module. We address each argument in 

turn.

A. Claims 1, 14–15

1. Construction of “periodically”

During inter partes reexamination, claims are given 

their broadest reasonable construction consistent with the 

specification. In re Rambus, Inc., 753 F.3d 1253, 1255

(Fed. Cir. 2014). We review the Board’s claim constructions de novo and its underlying factual determinations 

involving extrinsic evidence for substantial evidence. 

Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 

841–42 (2015).

As described above, the Board construed the “periodically” limitation to mean “both at regular and intermittent or irregular intervals.” Board Decision, 2016 WL 

1270198, at *5. While the parties vigorously debate

whether the claims cover “regular” or “irregular” verification checks, they do not clearly explain what those terms 

mean in the context of the claimed invention or in the 

context of the rejections at issue in this appeal. Nor were 

they able to do so when pressed at oral argument.

In any event, to the extent the Board’s construction 

does not limit the claims to verification checks that occur 

at equally spaced time intervals (e.g., every 10 minutes), 

we agree with that construction. As the Board correctly 

determined, the plain and ordinary meaning of the term 

“periodically” connotes repetition, but does not require 

that the repeated action occur at regularly spaced time

intervals. Id. at *4–5. The claims’ recitation of this term 

is entirely consistent with its plain meaning, and the 

patentee’s decision to amend certain other claims to 

require regular periodicity underscores this broad understanding. Claim 14, for example, requires that the control 

system “periodically verif[y] the functionality of each 
8 HILL-ROM SERVICES, INC. v. MATAL

module.” J.A. 2490. The claim was amended during 

reexamination, however, to add language requiring that 

the modules be “operable to transmit, at regular intervals, 

a status message over the network.” Id. (emphasis added). The presence of both “periodically” and “at regular 

intervals” in amended claim 14 strongly suggests that the 

term “periodically,” standing alone, is not limited to 

diagnostic checks that occur at regular intervals. See 

CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co.

KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence 

of any evidence to the contrary, we must presume that the 

use of these different terms in the claims connotes different meanings.”). 

To the extent the Board’s construction is broad 

enough to encompass verification checks that occur randomly (i.e., on an ad hoc basis), however, we disagree with 

that construction. The verification checks must repeat at 

spaced time intervals, though, not necessarily at equally 

spaced intervals. The ’263 patent is replete with examples that support this conclusion. The specification describes, for example, an embodiment in which each 

module “periodic[ally]” transmits a “heartbeat” message 

to allow the control system to “periodically” verify the 

module’s functionality: 

One feature of [the] network is the periodic

transmission of each module of a “heartbeat” message or status message to the bus for receipt by 

each of the remaining modules. In this manner, 

control system periodically verifies the functionality of each module in [the] system, and is able to 

identify a non-operational module by the absence 

of the module’s “heartbeat” message.

’263 patent, col. 30, ll. 43–50 (emphases added, reference 

numerals omitted). This passage states that the modules 

repeatedly transmit a status message at specified time 

intervals, and without prompting from the control system 
HILL-ROM SERVICES, INC. v. MATAL 9

or any other external source. The absence of such a 

message for a particular module signals to the control 

system that the module is non-functional. Indeed, as 

explained at column 30, lines 43 to 50, if the modules’ 

status messages were not repeated without the modules 

being prompted, the control system would not know when 

to receive a status message, and it would therefore be 

unable to determine whether the absence of a message 

indicates a problem. Thus, while we agree with the Board 

that the claims are not limited to the regularly repeated 

“heartbeat” verification check described in this passage, 

the passage’s description of “periodically” at least suggests that the modules must repeatedly transmit their 

status messages at specified time intervals, and without 

the modules being prompted. 

Other passages of the specification are consistent with 

this embodiment. The specification states, for example, 

that a “monitor activity step” “is a step that is periodically

executed during the turn assist operation,” that a “pressure control system” “periodically measure[s] the pressure 

of seat section air zone to make sure that it is within the 

desired ranges,” and that pressure sensors “periodically

sense the pressure in one or more of controlled air zones” 

of the mattress. Id. col. 81, ll. 65–66; id. col. 83, ll. 60–63; 

id. col. 96, ll. 18–22 (emphases added). Each of these

descriptions suggests that an action is repeated without 

prompting from an external source. The specification also 

states that a “timer is used to periodically sample temperature.” Id. col. 42, ll. 34–37 (emphasis added). The 

requirement that a timer be used for this purpose implies 

that the temperature is sampled at specified time intervals. There would be no need for a timer if the temperature were sampled randomly.

Finally, our interpretation is consistent with the prosecution history. During reexamination, Hill-Rom amended claim 1 by adding the “periodically” limitation. 

Contemporaneous with that amendment, Hill-Rom dis-
10 HILL-ROM SERVICES, INC. v. MATAL

tinguished Kummer on the basis that Kummer’s internal

diagnostic checks occur only when the modules are no 

longer performing a function. J.A. 2495–96. Hill-Rom 

also emphasized during the proceeding that Kummer 

“teaches an ad hoc or intermittent self-diagnostic process” 

and fails to “disclose that any self-diagnosis is done on 

any periodic schedule.” J.A. 2862–64. These statements, 

made when the “periodically” limitation was added to 

claim 1, are relevant as part of the ’263 patent’s prosecution history. See Northpeak Wireless, LLC v. 3COM 

Corp., 674 F. App’x 982, 986 n.1 (Fed. Cir. 2016) (“Statements made during reexamination procedures before the 

PTO are part of the prosecution history.” (citing Krippelz 

v. Ford Motor Co., 667 F.3d 1261, 1266 (Fed. Cir. 2012))). 

Consistent with the specification, these statements suggest that “periodically” cannot mean “ad hoc or intermittent.”

Thus, while the Board’s construction is correct, it is 

incomplete. We find that, while the ’263 patent claims 

are not limited to verification checks performed at equally 

spaced time intervals, they do not cover random or ad hoc 

verification checks, or checks that occur only when the 

modules are prompted to transmit status messages. This 

is the broadest reasonable interpretation that is consistent with the claims, specification, and file history. See 

In re Smith Int’l, Inc., 871 F.3d 1375, 1383 (Fed. Cir. 

2017).

2. Anticipation and Obviousness Findings

As described above, the Board determined that Kummer anticipates claim 1 and renders claim 1 and 14–15 

obvious in view of the other prior art of record. We review 

the Board’s anticipation determination, as well as the 

Board’s factual findings underlying its obviousness determination, for substantial evidence. Rambus, 753 F.3d 

at 1256; In re Adler, 723 F.3d 1322, 1325 (Fed. Cir. 2013). 
HILL-ROM SERVICES, INC. v. MATAL 11

We review the Board’s ultimate legal conclusion of obviousness, however, de novo. Adler, 723 F.3d at 1325. 

We find that the Board erred in determining that 

Kummer discloses the “periodically” limitation. Kummer 

discloses only that a “diagnostic check can be performed,” 

and even then, only “[a]fter [the] module performs its 

dedicated function.” Kummer, col. 20, ll. 28–35 (emphases added); see also id. col. 2, ll. 20–24 (“The network is 

capable of internally diagnosing hardware and software 

failures and recommending a corrective action.” (emphasis added)). To the extent Kummer’s diagnostic checks 

are performed at all, they are performed randomly or on 

an ad hoc basis, and after the modules are prompted. As 

we explained above, such verification checks fall outside 

the scope of the claims. The Board’s finding that Kummer 

satisfies this claim limitation is therefore unsupported by 

substantial evidence. 

Because Stryker did not argue that Kummer inherently discloses the “periodically” limitation, and because 

the Board made no factual findings that would support 

such a conclusion, we reverse the Board’s determination 

that Kummer anticipates claim 1 of the ’263 patent. See 

Home Semiconductor Corp. v. Samsung Elecs. Co., 701 F. 

App’x 1006, 1013–14 (Fed. Cir. 2017) (reversing where the 

appellee argued that a prior art reference inherently 

disclosed a particular claim limitation but failed to so 

argue below, and the Board did not make factual findings 

that would support that conclusion).

Similarly, with regard to its obviousness finding for 

claim 1, the Board relied only on Kummer for its disclosure of this limitation and did not find that a skilled 

artisan would have modified Kummer to perform repeated 

diagnostic checks. See Board Decision, 2016 WL 1270198, 

at *9. And, as the PTO acknowledges, claims 14–15 stand 

or fall with claim 1. Intervenor’s Br. 7. We therefore 
12 HILL-ROM SERVICES, INC. v. MATAL

reverse the Board’s determination that Kummer renders 

obvious claims 1 and 14–15 of the ’263 patent.

B. Claims 31–32

As described above, the Board affirmed the Examiner’s rejections of claims 31–32 based on the Examiner’s 

finding that Zeltwanger’s SDO satisfies the “module that 

operates as a master” limitation recited in those claims. 

Zeltwanger’s SDO is a non-physical communication 

protocol, akin to the language used for transmission of 

communications on a network. Although the Board did 

not construe the master module limitation, Hill-Rom 

argues that the Board improperly interpreted that term to 

include non-physical objects, such that the Board erred in 

finding that Zeltwanger’s SDO is a master module. 

As an initial matter, regardless of whether a master 

module is a physical structure, the Board erred to the 

extent it concluded that Zeltwanger’s SDO is a master 

module. The ’263 patent states that the prior art SDO 

protocol—i.e., the same protocol disclosed in Zeltwanger—

“is administered only by a master module.” ’263 patent, 

col. 34, ll. 7–8 (emphasis added). This statement makes 

clear that, although the existence of an SDO might imply 

the existence of a master module, an SDO is not itself a 

master module. Zeltwanger’s SDO therefore cannot 

expressly satisfy the master module limitation recited in 

claims 31–32, and the Board erred in so finding. 

The Board also erred to the extent it concluded that a 

master module need not be a physical structure. Claim 2, 

from which claims 31–32 depend, states that “control 

modules” are “coupled to the serial data bus,” and that 

each module includes “a microcontroller and a transceiver 

operable to communicate over the serial data bus.” 

J.A. 2490. The modules’ inclusion of physical structure

implies that they are themselves physical structures. The 

specification supports this interpretation. It states, for 

example, that the modules “include[] a controller, a trans-
HILL-ROM SERVICES, INC. v. MATAL 13

ceiver and associated electronics,” and that the modules 

contain hardware that enables “operation according to the 

CAN specifications.” ’263 patent, col. 29, ll. 47–49; id. col. 

32, ll. 60–64. The specification further states that a “logic 

module” “is electrically coupled to detachable siderail 

controller.” Id. col. 29, ll. 65–67; id. col. 30, ll. 1–5. Only 

a physical device can be “electrically coupled” to another 

physical device. And, because Zeltwanger’s SDO is not a 

physical device, the Board’s finding that Zeltwanger’s 

SDO satisfies the master module limitation is unsupported by substantial evidence.

At oral argument before this court, the PTO asserted 

that the Examiner and Board did not actually equate an 

SDO with a master module, but instead used the term 

“SDO” as “shorthand” for an “SDO module” or a “module 

that administers an SDO.” Oral Argument at 14:00–

14:25, Hill-Rom Servs., Inc. v. Matal (No. 2016-2199), 

http://oralarguments.cafc.uscourts.gov/default.aspx?fl=

2016-2199.mp3. We disagree with this characterization.

Stryker argued during reexamination that “the SDO 

feature of [Zeltwanger’s network protocol] meets” the 

master module claim limitation. J.A. 2357. The Examiner appeared to agree, stating that Zeltwanger satisfies the 

master module limitation because it teaches that “some 

modules are SDOs that transmit particular messages of 

any size compared to regular modules that are restricted 

to less than 8 bytes[.]” J.A. 2666; J.A. 2991–92. The 

Board itself agreed with the Examiner’s finding. Immediately after quoting Hill-Rom’s argument that SDOs are 

not physical structures, the Board noted that Hill-Rom 

failed to provide a definition of module “that would exclude an SDO.” Board Decision, 2016 WL 1270198, at 

*11. The Board also stated that “it would be inconsistent 

for [Hill-Rom] to argue that an SDO cannot serve as a 

master.” Id. We read these statements in context to 

mean that the Board found that an SDO is a master 
14 HILL-ROM SERVICES, INC. v. MATAL

module. As described above, that finding is unsupported 

by substantial evidence. 

The PTO conceded at oral argument that a master 

module is a physical structure. Oral Argument at 14:10–

14:15 (“We are talking about hardware.”). But, it asserted 

that the Board made alternative findings that support 

affirmance. Again, we disagree. The balance of the 

Board’s analysis, in its entirety, is as follows:

With respect to the SDO to [sic] operating on a 

module, the Examiner found “[i]t would have been 

obvious to one having ordinary skill in the art to 

make the diagnostic tool of Kummer an SDO 

module as taught in Zetlwanger [sic] (1999). One 

having ordinary skill in the art would do so to allow the diagnostic tool to operate as a master to 

send messages over the bus line of any size.” Patent Owner did not identify a defect in this reasoning. Consequently, we affirm the rejection of 

claim 31 for the reasons set forth above.

Id. (citation omitted). To the extent the PTO argues that 

these statements imply that the Board found that Kummer’s unmodified diagnostic tool is a master module, or 

that Zeltwanger inherently discloses a master module, we 

reject that argument. The statements cannot be fairly 

read to support such conclusions.3

3 Our case law establishes a “high standard in order 

to rely on inherency to establish the existence of a claim 

limitation in the prior art in an obviousness analysis[.]” 

Par Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 

1195–96 (Fed. Cir. 2014). The limitation at issue either 

necessarily must be present, or must be the natural result 

of the combination of elements explicitly disclosed by the 

prior art. Id. There is no evidence in the record, and the 

Board did not find, that Stryker satisfied this standard.

 
HILL-ROM SERVICES, INC. v. MATAL 15

At most, these statements by the Board are ambiguous. One reading of the statements is that the Board 

found only that Zeltwanger’s SDO is a master module, 

and that a skilled artisan would have been motivated to 

convert Kummer’s diagnostic tool into an SDO. Another 

plausible reading is that, even if an SDO is not itself a 

master module, the Board found that a skilled artisan

would have known that Kummer’s diagnostic tool could 

act as a master module by administering Zeltwanger’s 

SDO. Based on the cursory nature of the Board’s analysis, however, we cannot determine which, if either, interpretation is correct. And we will not “guess at the theory 

underlying the” Board’s action, SEC v. Chenery Corp., 332 

U.S. 194, 196–97 (1947), or assume that the Board meant 

one thing when it said something else. 

Our review of the Board’s decision “is rooted not just 

in the law of obviousness but in basic principles of administrative law.” Personal Web Techs., LLC v. Apple, Inc., 

848 F.3d 987, 992 (Fed. Cir. 2017). The Board must 

therefore “explicate its factual conclusions, enabling us to 

verify readily whether those conclusions are indeed supported by ‘substantial evidence’ contained within the 

record.” In re Gartside, 203 F.3d 1305, 1314 (Fed. Cir. 

2000); see also Power Integrations, Inc. v. Lee, 797 F.3d 

1318, 1326–27 (Fed. Cir. 2015) (holding that the Board’s 

reasoning must be set out “in sufficient detail to permit 

meaningful appellate review”). The Board has not done so 

here, and it is not our role to make factual findings in the 

first instance. See Mittal Steel Point Lisas Ltd. v. United 

States, 542 F.3d 867, 875 (Fed. Cir. 2008) (“Appellate 

courts do not make factual findings; they review them.”). 

Because we are unable to discern the basis for the Board’s 

obviousness determinations with respect to claims 31–32, 

we vacate the Board’s decision as to those claims. See 

Power Integrations, 797 F.3d at 1326–27. 

We conclude, moreover, that the Board’s motivation to 

combine analysis for this claim limitation is likewise 
16 HILL-ROM SERVICES, INC. v. MATAL

cursory. Rather than articulate reasons why it agreed 

with the Examiner’s analysis, the Board affirmed the 

rejection merely because, in its view, Hill-Rom did not 

identify a defect in the Examiner’s reasoning.4 But even 

the Examiner’s reasoning—i.e., that a skilled artisan

would combine the references “to allow the diagnostic tool 

to operate as a master to send messages over the bus line

of any size”—is conclusory. Board Decision, 2016 WL 

1270198, at *11. In any event, it is not enough to merely 

“summarize and reject arguments without explaining why 

the [Board] accepts the prevailing argument.” In re 

Nuvasive, Inc., 842 F.3d 1376, 1383–84 (Fed. Cir. 2016). 

The Board’s failure to clearly articulate a motivation to 

combine provides an additional reason for vacating its 

obviousness ruling. See id.; see also In re Van Os, 844 

F.3d 1359, 1361–62 (Fed. Cir. 2017) (vacating obviousness 

determination where the Board “did not explain why 

modifying” the prior art “would have been ‘intuitive’ or 

otherwise identify a motivation to combine”); Personal 

Web, 848 F.3d at 993–94 (vacating obviousness ruling 

where Board’s motivation to combine analysis was “wanting”).

4 In its analysis of claim 2, from which claims 31–32 

depend, the Board incorporated by reference its decision 

in another inter partes reexamination of a different patent 

that involved the same parties and prior art. Board 

Decision, 2016 WL 1270198, at *8–9 (citing Stryker Corp. 

v. Hill-Rom Servs., Inc., No. 2014-6135 (P.T.A.B. Oct. 14, 

2014), aff’d, 618 F. App’x 681 (Mem.) (Fed. Cir. 2015)). 

But in that proceeding, the Board found only that a 

skilled artisan would have been motivated to substitute

Kummer’s peer-to-peer network with Zeltwanger’s (and 

other references’) CAN. The Board did not address motivation to combine with respect to the master module 

limitation at issue here.

 
HILL-ROM SERVICES, INC. v. MATAL 17

Because the Board affirmed the Examiner’s rejection 

of claims 31–32 based only on the combination of Kummer 

and Zeltwanger, we vacate the Board’s decision as to 

those claims and remand for the Board to set “out its 

reasoning in sufficient detail to permit meaningful appellate review” under the proper interpretation of the master 

module limitation. Power Integrations, 797 F.3d at 1326–

27. 

IV. CONCLUSION

For the reasons stated above, we reverse the Board’s 

anticipation and obviousness determinations based on 

Kummer as to claims 1 and 14–15. We also vacate the 

Board’s obvious determinations based on Kummer and 

Zeltwanger as to claims 31–32, and remand for proceedings consistent with this opinion. 

Although the Board affirmed the Examiner’s rejections with respect to the other prior art of record, the 

Board’s analysis was “specifically directed to Kummer” as 

a primary reference and did not “address each of the 

rejections individually.” Board Decision, 2016 WL 

1270198, at *3. Neither Hill-Rom nor the PTO addresses 

in meaningful detail any prior art references other than 

Kummer and Zeltwanger. Thus, because the other references are not before us on appeal, we vacate the Board’s 

decision as to claims 1, 14–15, and 31–32 with respect to 

all prior art combinations other than those involving 

Kummer and Zeltwanger. On remand, the Board is not 

permitted to reconsider its invalidity determinations 

based on references other than Kummer and Zeltwanger. 

REVERSED IN PART, VACATED IN PART, AND 

REMANDED

COSTS

No costs.