In re Jeff Lovin et al (CAFC 2010-1499) precedential; Judges Bryson, Mayer, and Dyk (author)

At the heart of this dispute is whether Lovin, in his appeal brief before the Board, adequately provided arguments for the separate patentability of certain claims pursuant to 37 C.F.R. § 41.37(c)(1)(vii) ("Rule 41.37"). Rule 41.37 sets forth the requirements for argument in an appeal brief before the Board. It provides in relevant part:

(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.

This is where the hogwash starts. The prosecutor argued the deficiencies in the prior art - claimed elements not met, and argued both independent and dependent claims individually. The prosecutor's BPAI appeal brief was copasetic and meritorious. Based on the prosecution history, the claims should have been allowed.

Throughout prosecution before the examiner, Lovin had presented arguments with respect to the independent claims, but did not provide separate arguments for the dependent claims.

So what. That is common practice. Applicant amended independent claims to overcome rejections.

Lovin filed his appeal brief to the Board on August 4, 2008. For the first time, Lovin 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.

That is not true. The dependent claims were argued to a level that should have sufficient, by pointing out what claimed elements were lacking in the asserted prior art. Some arguments were more extensive than others, as needed.

On appeal, the CAFC lumped in independent claims with dependent claims, calling them all "dependent claims," with no legitimate basis.

Lovin argues that his appeal brief before the Board satisfied Rule 41.37 because it contained separate headings and substantive arguments for each dependent claim. Lovin maintained that the only requirement for substantive argumentation for dependent claims is 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." Appellant's Br. 12-13 (quoting In re Beaver, 893 F.2d 329, 330 (Fed. Cir. 1989)). The PTO responded that, under long-standing Supreme Court authority, we should defer to the Board's interpretation of Rule 41.37 as requiring more than the truncated arguments appearing in Lovin's appeal brief.

This is the setup for the CAFC to kiss the PTO's procedural papal ring. But this was a substantive matter, not procedural. The CAFC pretends not to know the difference when it suits them, as here, having previously ruled that the PTO gets no deference for substantive rules. (See Tafas v. Doll.)

The Supreme Court has long recognized that an agency's construction of its own regulations is entitled to substantial deference.

That is the launch platform for much legal rationalization that is rather irrelevant to what really was going on in this case, concluding with....

[W]e accept the Board's interpretation of PTO regulations unless that interpretation is "plainly erroneous or inconsistent with the regulation." 362 F.3d at 1326. Rule 41.37 provides:

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. . . . A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.

37 C.F.R. § 41.37(c)(1)(vii) (2007) (emphases added). We conclude 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." Board Decision, slip op. at 3. 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.

A bald-faced lie is not manifestly unreasonable if the courts chose to ignore facts, which is the case here.

Affirmed.

Another nail in the coffin of what should be legal patent protection.

The file wrapper for 10/924,633 is available on public PAIR.