In re Lovin on appeal briefs to the BPAI

Manifestly, the CAFC decision in In re Lovin is about Rule 41.37 :

In sum, we hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art. Because Lovin did not provide such arguments, the Board did not err in refusing to separately address claims 2–15, 17–24, and 31–34.

Footnote 9 gave support:

See, e.g., Ex Parte Pea, No. 2008-005064, 2010 WL 373841 at *5 (B.P.A.I. Feb. 2, 2010) (where the appellants had reiterated the claim language found in certain dependent claims and stated that “[the prior art reference] does not disclose this aspect of the invention,” the Board held that “a statement that merely points out what a claim recites is not a separate argument for patentabil- ity”); Ex parte Carlsson, No. 2007-2475, 2007 WL 4219726 at *6 (B.P.A.I. Nov. 29, 2007) (holding that “a recitation of what each claim state[d]” along with a “bald assertion, unsupported by specific arguments, that the claimed limitations [were] not disclosed in any proper combination of the prior art” was not a sufficient argument for sepa- rate patentability); Ex parte Portnoy, No. 2004-1461, 2005 WL 951657 at *2 (B.P.A.I. 2005) (where the appellant had “baldly asserted that the prior art [did] not teach or suggest the features of the[ ] claims,” the Board held that “[p]ointing out what the claim requires with no attempt to point out how the claims patentably distinguish over the prior art does not amount to a separate argument for patentability”).

Footnote 8 foreshadowed the outcome:

In a recent paper, Chief Administrative Patent Judge Michael Fleming and three other judges from the Board directly addressed this point:
8
Appellants will sometimes include separate subheadings for dependent claims, but [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 find- ing that the art does show element x is in error, [t]he panel will usually not treat such an argu- ment as an argument for separate patentability of the dependent claim.
Fleming, Michael et al., Effective Appellate Advocacy in Ex Parte Appeals Before the Board of Patent Appeals and Interferences 4–5 (Apr. 2010) (emphasis added).

Of interest are the citations in the text:

Because the court in Beaver could not and did not address the current version of the Rule containing the “merely pointing out” language, it cannot be a binding interpretation of the current rule’s requirements. See Sacco v. United States, 452 F.3d 1305, 1308 (Fed. Cir. 2006) (find- ing that a prior case “is not binding precedent on [a] point because the court did not address the issue” in that prior case); Boeing N. Am., Inc. v. Roche, 298 F.3d 1274, 1282 (Fed. Cir. 2002) (“[W]e are not bound by [a prior opinion] on the issue . . . since [that] issue was neither argued nor discussed in our opinion.”).

Yes, Chevron came up:

In National Cable & Telecommunications Association v. Brand X Internet Services, 545 U.S. 967, 982 (2005), the Supreme Court examined whether the stare decisis effect of an appellate court’s interpretation would foreclose Chevron deference to an agency’s subsequent, but contrary, interpretation of a statute. The Court held that a judicial interpretation would trump an agency’s construction only if the judicial precedent “unambiguously foreclose[d] the agency’s interpretation, and therefore contain[ed] no gap for the agency to fill.” Id. at 982; see also Chevron U.S.A. Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984). The principles in National Cable apply equally to an agency’s interpretation of its own regulations. See Levy v. Sterling Holding Co., LLC, 544 F.3d 493, 502 (3d Cir. 2008) (holding that National Cable requires deference to the Security and Exchange Commission’s amendments to a regulation over a prior contrary judicial interpreta- tion); see also Udall, 380 U.S. at 16–17 (“When the con- struction of an administrative regulation rather than a statute is in issue, deference is even more clearly in order.”). Thus, we are obligated to follow our earlier judicial decisions—in the face of a new agency interpreta- tion—only if we had found that the language in that decision “unambiguously foreclose[d]” the Board’s inter- pretation. Nat’l Cable, 545 U.S. at 982.

KSR isn't cited, but it was a looming presence.

Keyword: RICHARD B. LAZARUS