In re Lovin (appeal procedure)

In re Lovin
Docket No. 2010-1499
BRYSON, MAYER, DYK
July 22, 2011

Subject matter: appeal procedure

Lovin appealed BPAI decision that claims 1-15, 17-24 and 30-34 of U.S. Appln. No. 10/924,633 directed to “a method and system of friction welding” were obvious. A key point in the dispute is whether Lovin adequately provided patentability arguments each claim (e.g., group vs. separate) in the appeal brief (“Rule 41.37”). During prosecution, Lovin argued for the patentability of each independent claim without separately arguing for each dependent claim. In the appeal brief, Lovin addressed the dependent claims but these were not “relatively well-developed” (Lovin “simply asserted that these elements were not present in the prior art and asserted non-obviousness” (e.g., “Claim 11 thus recites the additional braking step for which there is no corresponding step taught or suggested [by the cited art]. 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.”) In its opinion, the BPAI stated: “[M]erely pointing out the differences in what the claims cover . . . is not a substantive argument as to the separate patentability of the claims” (e.g., as in the 1998 revision of the predecessor of rule 41.37, retained in 2004). After addressing precedent, the FC first determined that it 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” (citing Nat’l Cable, US 2005). It therefore concluded that the BPAI’s interpretation of the rule was not outside of its authority, and affirmed the BPAI decision. In its analysis, the FC also pointed to an article written by BPAI judges explaining that an argument is incomplete where it “fails to include any explanation of why the art doesn’t show element x or why the examiner’s finding that the art does show element x is in error”. Thus, Applicants are required “to articulate more substantive arguments if they wish for individual claims to be treated separately”. Applicants should therefore be sure such separate arguments are made during prosecution and prior to appeal.