Appeal Briefs Must Contain Substantive Arguments for Claims Considered Separately
In re Jeff Lovin (decided 7/22/11)By: John S. Harmon
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What This Means to You
- Provide substantive arguments, beyond merely reciting claim limitations, for each claim to be considered separately.
- Do not provide the same argument for multiple claims if they are to be considered separately.
- If a PTO rule has a long standing interpretation, it should be followed.
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Overview
In In re Jeff Lovin, Robert Adams, and Dan Kuruzar, the US Court of Appeals for the Federal Circuit (Federal Circuit) confirmed the right of the U.S. Patent and Trademark Office (PTO) to require substantive arguments for each claim to be considered separately in an appeal.
Case Background
The plaintiff filed a patent application on August 24, 2004. During prosecution, the PTO found all the claims to be obvious. In the plaintiff’s appeal brief, filed with the PTO’s Board of Patent Appeals and Interferences (Board) on August 4, 2008, it submitted well developed arguments for two of the independent claims, reciting the same arguments for the remaining independent claims. The plaintiff argued the dependent claims by simply reciting the claim language and stating that such a limitation was not present in the prior art.
In view of the submitted brief, the Board stated that only the two separately argued claims would be considered separately. The remaining claims, including the remaining independent claims, were not considered separately by the board.
The Board subsequently found the two considered claims to be obvious and thus the remaining claims were also obvious. The plaintiff appealed to the Federal Circuit, arguing that the remaining claims should have been considered separately.
Decision Analysis
In the decision, the Federal Circuit took the position that it would accept the Board’s interpretation of PTO regulations unless that interpretation was “plainly erroneous or inconsistent with the regulation.” The court then went on to say that the Board’s interpretation of the regulation was reasonable and that the regulation had been consistently interpreted in that fashion and applied since its introduction in 2004.
Takeaways
As a result of this case, we recommend providing separate substantive arguments, in addition to separate subheadings, for each claim that is to be considered separately in an appeal.
The arguments also should not be duplicated between separate claims and should point out the distinguishing limitations of each claim.
Furthermore, if a rule has a long standing interpretation by the PTO, it should be followed.
