In re Lovin

July 27, 2011 – Blog Post

In In re Lovin, (Case No. 2010-1499, in Application Serial No. 10/924,633, decision issued July 22, 2011), the issue before the United States Court of Appeals for the Federal Circuit was whether the Board of Patent Appeals and Interferences (the “Board”) correctly interpreted Rule 41.37 in refusing to separately address the obviousness of dependent claims.  Rule 41.37 sets forth the requirements for arguments in an appeal brief before the Board.  The section at issue is 41.37(c)(1)(vii), which states:

(vii) Argument….For each ground of rejection applying to two or more claims, the claims may be argued separately or as a group. When multiple claims subject to the same ground of rejection are argued as a group by appellant, the Board may select a single claim from the group of claims that are argued together to decide the appeal with respect to the group of claims as to the ground of rejection on the basis of the selected claim alone. Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately. Any claim argued separately should be placed under a subheading identifying the claim by number. Claims argued as a group should be placed under a subheading identifying the claims by number. A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim. (Emphasis added).

Lovin, in his appeal brief to the Board attempted to address the patentability of the dependent claims by listing each claim under a separate subheading with separate arguments.  While his arguments for independent claims 1 and 30 were relatively well-developed, his arguments for the dependent claims and the remaining independent claims were not.  For the dependent claims, Lovin adopted the arguments from the corresponding independent claims, but with respect to the additional elements of the dependent claims, Lovin simply asserted that these elements were not present in the prior art and asserted non-obviousness over the combined teachings of the prior art.

An example of Lovin’s approach for arguing the non-obviousness of the dependent claims is below:

Claim 11 is dependent on Claim 1 and adds the step of “braking the one sample part during rotational deceleration of the one sample part during rotational deceleration of the one sample part.”  Claim 11 thus recites the additional braking step for which there is no corresponding step taught or suggested in any of Benn et al., Takagi et al, and Ludewig et al.  The office action does not explain the lack of a teaching or suggestion of the step of claim 11 in the prior art.  For at least this reason, and the reasons noted above with respect to claim 1, the combination of Benn et al. Takagi et al. and Ludewig et al. would not arrive at the claimed subject matter and the claimed subject matter would not have been obvious.

The Board affirmed the examiner’s rejection of claim 1 as obvious over the prior art.  With regard to independent claims 8, 17, and 23, the Board found that Lovin had provided the “same rationale” for non-obviousness as for claim 1, and thus held those claims as obvious.  The Board also affirmed the examiner’s rejection of all dependent claims, concluding that Lovin merely “point[ed] out what the claims recite and then assert[ed] that there [was] no corresponding combination of steps taught or suggested in the applied references.”  Invoking Rule 41.37, the Board concluded that: “[M]erely pointing out the differences in what the claims cover…is not a substantive argument as to the separate patentability of the claims.  Accordingly, claims 2-15 and 17-24 stand or fall with claim 1, and claims 31-34 stand or fall with claim 30.”

On Appeal, the issue was whether the Board correctly interpreted Rule 41.37 in refusing to separately address the obviousness of claims 2-15, 17-24, and 31-34.  Even though claims 8, 17, 23, and 34 are independent, they were treated as dependent claims because they merely confirmed the limitations of claim 1 and then added additional elements. Claims 2-7, 9-15, 18-22, 24, and 31-33 were dependent claims.

The Court stated that “we accept the Board’s interpretation of PTO regulations unless that interpretation is ‘plainly erroneous or inconsistent with the regulation.’”  The Court concluded that “the Board has reasonably interpreted Rule 41.37 to require applicants to articulate more substantive arguments if they wish for individual claims to be treated separately.  Although Lovin properly included separate subheadings for each claim in his appeal brief as required by the rule, his 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….The Board thus concluded that Lovin had waived any argument for separate patentability of claims 2-15, 17-24, and 31-34.  This interpretation of Rule 41.37 is not manifestly unreasonable.” 

Thus, the Court held that the Board “reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.  Because Lovin did not provide such arguments, the Board did not err in refusing to separately address claims 2-15, 17-24, and 31-34.”

An important lesson to take away from this case is that when preparing an Appeal Brief before the board, do not present arguments that merely recite the claim elements and simply assert that these elements are not present in the prior art.  A detailed explanation of how the reference and/or references are missing a particular element should be given.