On appeal, BPAI cannot group claims that do not share a common reason for rejectionJanuary 2, 2009

In a recent decision, the Federal Circuit affirmed a distirct court's vacatur of a decision of the Board of Patent Appeals and Interferences. In an appeal of rejections in twelve different applications involving approximately 2,400 claims, the Board only addressed the rejection of 21 "represntative" claims pursuant to 37 C.F.R. § 1.192(c)(7) [now 37 C.F.R. § 41.37(c)(vii)]. The Board took this position that each of the claims in the groupings were rejected under the same statutory provision, even though the rejections were not necessarily based on the same limitations.

The district court held this was improper. Specifically, the district court held the Board could only group claims if the basis for the rejection was the same, which requires both the same statutory provision and the same underlying basis for the rejection. Here, because the rejections at issue were predominantly under the written description requirement, the district court held claims could only properly be grouped if the limitation that was allegedly not described was present in each of the grouped claims.

The Federal Circuit affirmed, agreeing with the district court's analysis.

Gilbert Hyatt is the named inventor on twelve patent applications filed in May and June, 1995, but claiming priority, through a series of continuation applications to the early 1980s. Astute readers will recognize that June 8, 1995 is a critical date for patent term purposes, with applications on file before that date granted a term of the longer of 20 years from the earliest priority date or 17 years from the issue date. The four patents combined had roughly 2,400 claims, and all were finally rejected on various grounds, including noncompliance with the written description requirement—a common problem for applications with such a long priority chain.

Hyatt appealed the rejections to the Board of Patent Appeals and Interferences. On appeal, Hyatt contended each of the claims were separately patentable, and requested the Board examine the patentability of each separately, although he only actually provided separate argument in his brief for 21 of his claims. Because of this, the Board considered those 21 claims as "representative" for purposes of the appeal, and affirmed the rejections of those claims and, by extension, the remaining "non-representative" claims. Hyatt challenged this decision in district court pursuant to 35 U.S.C. § 145, arguing the Board improperly selected the 21 claims as representative, and should have addressed each of the claims individually or, in the alternative, that the Board improperly selected these 21 claims as representative. The district court partially agreed with Hyatt, holding that while he did not argue each of his claims individually, it was improper for the Board to group claims simply because they were rejected under the same section of the statute. Instead, in order to comply with 37 C.F.R. § 1.192(c)(7) [now 37 C.F.R. § 41.37(c)(vii)], for the written description rejections, the Board had to at least group claims that shared a common limitation that was allegedly not described. The USPTO appealed.

The Federal Circuit affirmed. As an initial matter, the court first addressed whether it had jurisdiction over the appeal. Generally the court does not have jurisdiction over an order remanding a the case to the USPTO in a § 145 action. However, the court may accept jurisdiction if denying review "would likely result in the permanent loss of an agency's ability to appeal the lower court's determination of a legal issue." Such a case existed here, as without appeal, the USPTO would not be able to obtain review of the district court's interpretation of the applicable regulation, so the Federal Circuit held it properly had jurisdiction over the appeal.

Turning to the merits, the court first observed that the USPTO's interpretation of its own regulation is entitled to "substantial deference," and is only reversible if "plainly erroneous or inconsistent with the regulation." The text of the regulation is reproduced below, with the relevant passage emphasized:

Grouping of claims. For each ground of rejection which appellant contests and which applies to a group of two or more claims, the Board shall select a single claim from the group and shall decide the appeal as to the ground of rejection on the basis of that claim alone unless a statement is included that the claims of the group do not stand or fall together and, in the argument under paragraph (c)(8) of this section, appellant explains why the claims of the group are believed to be separately patentable. Merely pointing out differences in what the claims cover is not an argument as to why the claims are separately patentable.

The question was whether "ground of rejection" just means the particular statutory section that forms the basis for the rejection, or the underlying reason why the claim did not meet the statutory requirement. According to Hyatt, claims may only properly be grouped if the rejection of those claims is based on the same section and for the same reason (here a limitation that was not adequately described); the USPTO conteded only the same section needed to be implicated.

Unfortunately for the USPTO, the Federal Circuit had previously held in In re McDaniel that differences among grouped claims must be of "no patentable consequence to a contested rejection." Accordingly, under McDaniel, the "ground of rejection" discussed in § 1.192(c)(7) "is not merely the statutory requirement for patentability that a claim fails to meet but also the precise reason why the claim fails that requirement."

Applying this interpretation, the court had little trouble affirming the district court's judgment. The claims at issue were not grouped in this manner by the Board, so the district court's order to do so on remand was correct. The Federal Circuit did offer some solace to the USPTO, noting that Hyatt was not permitted on remand to raise new arguments not previously raised to the Board, unless such arguments were not previously required to have been made.

To read the full decision in Hyatt v. Dudas, click here.

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