The Federal Circuit upheld the BPAI’s interpretation of 37 C.F.R. § 41.37 to require more substantive arguments in an appeal brief regarding the separate patentability of dependent claims than a mere recitation of the additional claim elements and a naked assertion that corresponding elements are not found in the prior art.

After the patent examiner’s rejection of the claims of an application for obviousness, the applicant appealed to the Board of Patent Appeals and Interferences (“BPAI”).  In the appeal brief, the applicant tried to address the separate patentability of each of the dependent claims by listing each claim under a separate subheading with a separate section for arguments.  However, with respect to the additional elements of the dependent claims, the applicant simply asserted that these elements were not present in the prior art and asserted non-obviousness over the combined teachings of the prior art.  The BPAI affirmed the examiner’s rejection of all the dependent claims, interpreting  37 C.F.R. § 41.37(c)(1)(vii) to require an applicant to do more than point out the differences in what the claims cover to argue the separate patentability of the claims.  The Federal Circuit affirmed.

On appeal, the applicant argued that the only requirement for substantive argumentation for dependent claims under Rule 41.37 is to point out the essential elements as compared with prior claims and the inapplicability of the cited references, which had previously been discussed in the applicant’s brief.  The applicant based his argument on Federal Circuit precedent which reversed a similar rejection.  The Federal Circuit disagreed.

It noted that it could only reverse the U.S. Patent and Trademark Office’s (“PTO’s”) interpretation of its own regulations if the interpretation is plainly erroneous or inconsistent with the regulation or if a previous judicial opinion unambiguously foreclosed that interpretation.  The Federal Circuit found that the BPAI’s interpretation of Rule 41.37 was reasonable.  The Federal Circuit also found that its precedent did not unambiguously foreclose the PTO’s interpretation, as the version of Rule 41.37 (in place at the time of the earlier opinion) did not have the very language which was later added to make stronger requirements for separate patentability.  Because the pertinent language in the current version of the rule was not before the court in the earlier opinion, that opinion could not be a binding interpretation of the current rule’s requirements.

A copy of the opinion can be found here.