Each Patent Claim Should Be Argued Separately

On July 22, 2011, the Court of Appeals for the Federal Circuit (CAFC) issued a precedential opinion addressing how patent attorneys should treat dependent claims when drafting responses to Office actions. In re Lovin, ___ F.3d ____ (Fed. Cir. 2011).

From the opinion, “at the heart of this dispute is whether Lovin, in his appeal brief before the Board [of Patent Appeals and Interferences], adequately provided arguments for the separate patentability” of certain dependent claims under to 37 C.F.R. 41.37(c)(1)(vii) (“Rule 41.37”) (emphasis added). Id. at *3. This rule allows petitioners to separately argue claims or to argue for allowance of a group claims. During prosecution, Lovin did not provide separate arguments for the dependent claims.

For the first time, Lovin separately argued for allowance (patentability) of the dependent claims in an appeal brief to the Board. Lovin “adopted the arguments from the corresponding independent claims, but with respect to the additional elements of the dependent claims, Lovin simply asserted that these elements were not present in the prior art and asserted non-obviousness over the combined teachings” of the references. Id. at 4. Lovin also merely adopted the same argument used in support of the first two independent claims for the remaining independent claims – he did not address why the additional features of these claims should be separately patentable.

The CAFC court quoted Rule 41.37 to support its decision. In relevant part, Rule 41.37 states:

“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. . . . A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.” 37 C.F.R. § 41.37(c)(1)(vii) (2007) (emphases added)

The court stated that Rule 41.37 requires Lovin to articulate a more substantive argument if he wished for individual claims to be “treated separately.” Slip. Op., at *14-15. Merely pointing out what the claims recite and then asserting that there is no corresponding combination of steps “taught or suggested” by the references is not enough.

The court mentioned in a footnote that this position is supported by a recent paper by Chief Administrative Patent Judge Michael Fleming and three other judges from the Board. The recent paper is Effective Appellate Advocacy in Ex Parte Appeals Before the Board of Patent Appeals and Interferences, pages 4-5 (Apr. 2010).  This paper states in part:

that if the argument “merely states that the rejection should be reversed because the prior art does not disclose element x, where element x is merely a quote of the claim language, [and] [t]his argument 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, [t]he panel will usually not treat such an argument as an argument for separate patentability of the dependent claim.”

The lesson from this case is simply that patent attorneys (prosecutors) need to spend a few sentences and explain why and how the claim language is not reached by the reference or references cited against the particular dependent claims. Further, each dependent claim should contain features or elements that separately provide support for patentability of the claim over the art.