At first glance, the Federal Circuit decision in In re Lovin didn’t appear very interesting. I know that in a Board appeal you need to argue claims separately if you want the Board to give them separate consideration, and I even know that you need to present those arguments under separate subheadings. But as I read the decision, it was unsettling to see that Lovin’s separate arguments were deemed insufficient to even merit separate consideration, and disturbing to see that the court relied on a paper by Judge Fleming and a non-precedential Board decision to support its finding that the Board’s interpretation of Rule 41.37 against Lovin “is not new.” While I am used to counseling applicants about the risks of secret prior art, it looks like I may have to figure out how to comply with nearly-secret Board interpretations of the appeal rules.

Rule 41.37

The Appeal Brief rule at issue is 37 CFR § 41.37(c)(vii):

(vii) Argument. . . . Each ground of rejection must be treated under a separate heading. For each ground of rejection applying to two or more claims, the claims may be argued separately or as a group. . . . 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.

Lovin’s Board Appeal

Lovin’s application had 34 claims, including 6 independent claims. During prosecution, Lovin focused its arguments on the independent claims, and did not separately argue any dependent claims.

Lovin’s Appeal Brief included separate subheadings for the dependent claims, and separate arguments along the following lines:

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.” 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.

According to the Federal Circuit decision, the Examiner’s Answer “cit[ed] the column and line number where the disputed elements could be found in the prior art.”

Lovin did not submit a Reply Brief. (While I understand how this factor could weigh against him on the merits, it was not germane to the issue of whether his Appeal Brief arguments were sufficient to earn separate consideration of the dependent claims.)

The Board Decision 

The Board affirmed the rejections on appeal. The Board did not give separate consideration to any of the dependent claims, stating 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.”  The Board cited Rule 41.37 for the proposition 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.

In denying Lovin’s request for rehearing, the Board explained further:

Lovin’s cursory arguments with respect to these claims did not satisfy Rule 41.37 because “the … statement as to what each claim recites, followed by a statement that there is no corresponding step in the applied references, is tantamount to merely pointing out the differences in what the claims cover, and i[s] not a substantive argument as to the separate patentability of the claims.

If you believe that there is no prima facie case of obviousness, why isn’t “pointing out the differences” between the claimed invention and the prior art sufficient?

If you believe that the references simply do not teach a recited claim element, what more are you supposed to say?

The Federal Circuit commented that Lovin “did not explain why the additional features in those claims should be separately patentable.” This suggests that merely demonstrating a lack of prima facie obviousness (e.g., missing claim elements) may not be sufficient.

With a statutory scheme that puts the burden on the USPTO in the first instance, when the cited prior art does not teach every claim element is it proper to require applicants to make an affirmative showing that “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would not have been obvious”? (See 35 USC § 103)

The Federal Circuit Decision

The issue before the Federal Circuit was “whether the Board correctly interpreted Rule 41.37 in refusing to separately address the obviousness” of Levin’s dependent claims.

Lovin argued that his Appeal Brief satisfied Rule 41.37 because it contained separate headings and substantive arguments for each dependent claim, e.g., it pointed 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.” Lovin cited two Federal Circuit decisions where the court found that claims were entitled to separate consideration based on similarly brief arguments.

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 Lovin’s appeal brief.”

The Federal Circuit considered the competing principles of the deference owed to an agency’s interpretation of its own rule and an agency’s obligation to follow judicial interpretations of its rules, and determined that the court is “obligated to follow our earlier judicial decisions—in the face of a new agency interpretation—only if we had found that the language in that decision ‘unambiguously foreclose[d]’ the Board’s interpretation.” The Federal Circuit determined that the cases cited by Lovin did not foreclose the Board’s interpretation here, because they did not directly address Rule 41.37 and/or were factually distinguishable.

As a final step, the Federal Circuit considered whether the Board’s interpretation was “plainly erroneous or inconsistent with the regulation,” and determined that it was not:

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 . . . . This interpretation of Rule 41.37 is not manifestly unreasonable.

The Federal Circuit expressed a comfort level with the Board’s interpretation, noting that it “is not new.” But in support of this finding, the Court cites a 2010 paper by Judge Fleming (Effective Appellate Advocacy in Ex Parte Appeals Before the Board of Patent Appeals and Interferences), and several Board decisions, at least one of which (In re Portnoy) is unpublished.

More Burdens On Applicants

I’m sure I need to brush up on my administrative law, but I don’t believe that a paper authored by a single Administrative Patent Judge qualifies as an official agency interpretation, even if he was the Chief Administrative Patent Judge at the time. (Never mind that Lovin filed his Appeal Brief in 2008, while the paper was not published until 2010!) Moreover, holding applicants and practitioners to interpretations set forth in decisions that the Board doesn’t even designate as precedential seems nothing short of a double standard—you can’t cite this decision in your favor, but we can cite it against you.

All in all, I think this decision reflects a trend in recent Federal Circuit decisions to place prosecution burdens on the shoulders of applicants. Here, Lovin might have fared better if he had argued the dependent claims separately before the examiner, if he had developed the arguments more fully in the Appeal Brief, or if he had filed a Reply Brief. Still, it is disconcerting that pointing out that a claim element is missing from the prior art can be insufficient as a matter of law to even merit separate consideration of that claim on appeal.