United States: Merely Pointing Out Differences In What The Claims Cover Is Not A Substantive Argument As To Separate Patentability Of The Claims

This article previously appeared in Last Month at the Federal Circuit, August, 2011.

Judges: Bryson, Mayer, Dyk (author)

[Appealed from Board]

In In re Lovin, No. 10-1499 (Fed. Cir. July 22, 2011), the Federal Circuit affirmed the Board's decision that claims 1-15, 17-24, and 30-34 in Jeff Lovin, Robert Adams, Dan Kuruzar, and Dietmar Spindler's (collectively "applicants") U.S. Patent Application No. 10/924,633 ("the '633 application") would have been obvious, and found that the Board reasonably interpreted 37 C.F.R. § 41.37(c)(1)(vii) ("Rule 41.37") in refusing to separately address claims 2-15, 17-24, and 31-34 in its obviousness determination.

The '633 application is directed to "a method and system of friction welding." In friction welding, a first part is brought into contact with a second part and rotated so that the heat generated fuses the two parts together. The invention is designed to decrease the variation in "upset" (displacement of material from the parts) between parts from repeated use of welding machinery. The '633 application has thirty-four claims, of which claims 1, 8, 17, 23, 30, and 34 are independent. Before the examiner, applicants presented arguments with respect to the independent claims, but did not provide separate arguments for the dependent claims. Even with respect to the independent claims, applicants merely repeated the claim language and stated that the prior art did not contain those features. The examiner rejected claims 1-24 and 30-34 as obvious.

In applicants' appeal brief to the Board, applicants attempted to address the patentability of the dependent claims by listing each claim under a separate subheading with separate arguments. For the dependent claims, applicants adopted the arguments from the corresponding independent claims, but with respect to the additional elements of the dependent claims, applicants simply asserted that these elements were not present in the prior art and were thus nonobvious over the combined teachings of the prior art. The Board affirmed the examiner's obviousness rejection and invoked Rule 41.37 to find that "claims 2-15 and 17-24 stand or fall with claim 1, and claims 31-34 stand or fall with claim 30." Slip op. at 6 (citation omitted). The Board also denied applicants' request for rehearing.

On appeal to the Federal Circuit, applicants did not challenge the Board's decision finding claims 1 and 30 obvious; rather, applicants challenged whether the Board correctly interpreted Rule 41.37 in refusing to separately address the obviousness of claims 2-15, 17-24, and 31-34. Applicants argued that their appeal brief before the Board satisfied Rule 41.37 because it contained separate headings and substantive arguments for each dependent claim and that the only requirement for substantive argumentation for dependent claims was that the applicant "point out the essential elements as compared with prior claims and the inapplicability of the cited references, which ha[d] previously been discussed in the [applicant's] brief." Id. at 7 (alterations in original) (citation omitted). In response, the PTO argued that the Court should defer to the Board's interpretation of Rule 41.37 as requiring more than the truncated arguments appearing in applicants' appeal brief.

"Although [applicants] properly included separate subheadings for each claim in [their] appeal brief as required by the rule, [their] arguments under those subheadings merely 'point[ed] out what the claims recite[d] and then assert[ed] that there [was] no corresponding combination of steps taught or suggested in the applied references.'" Slip op. at 15 (citation omitted).

The Federal Circuit acknowledged that Congress delegated to the PTO the rulemaking power to "establish regulations, not inconsistent with the law, which . . . shall govern the conduct of proceedings in the Office." Id. at 8 (alteration in original) (quoting 35 U.S.C. § 2(b)(2)). Further, the PTO's interpretation of its own regulations is entitled to "'substantial deference' unless the interpretation is 'plainly erroneous or inconsistent with the regulation.'" Id. (citations omitted). The Court noted, however, that In re Garner, 508 F.3d 1376, 1378-79 (Fed. Cir. 2007), and Dethmers Manufacturing, Inc. v. Automatic Equipment Manufacturing Co., 272 F.3d 1365, 1370 (Fed. Cir. 2001), held that the PTO must follow the Court's judicial interpretations of the PTO's regulations. That obligation, however, is not absolute unless "the judicial precedent 'unambiguously forclose[d] the agency's interpretation, and therefore contain[ed] no gap for the agency to fill.'" Slip op. at 9 (alterations in original) (citation omitted).

The Federal Circuit rejected applicants' argument—that In re Nielson, 816 F.2d 1567 (Fed. Cir. 1987), and In re Beaver, 893 F.2d 329 (Fed. Cir. 1989), represented binding authority that should control the PTO's construction of Rule 41.37—because neither of those decisions directly confronted Rule 41.37 or its predecessor regulation, 37 C.F.R. § 1.192. Thus, the Board was not foreclosed from interpreting Rule 41.37.

The Court found that the Board reasonably interpreted Rule 41.37 to require applicants to articulate more substantive arguments if applicants want individual claims treated separately. "Although [applicants] properly included separate subheadings for each claim in [their] appeal brief as required by the rule, [their] arguments under those subheadings merely 'point[ed] out what the claims recite[d] and then
assert[ed] that there [was] no corresponding combination of steps taught or suggested in the applied references.'" Slip op. at 15 (citation omitted). Thus, the Board's conclusion—that applicants waived any argument for separate patentability of claims 2-15, 17-24, and 31-34—was not manifestly unreasonable.

Further, the Court noted that the Board's interpretation of Rule 41.37 was not new to this case. Rather, it reflected the Board's consistent interpretation of the rule since it was promulgated in 2004 and was thus the governing interpretation before applicants filed their appeal brief to the Board.

Accordingly, the Federal Circuit held that the Board reasonably interpreted Rule 41.27 and did not err in refusing to separately address claims 2-15, 17-24, and 31-34 in its obviousness determination.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.