Sunday, February 10, 2013

"Grounds of rejection" dispute in Ex parte Doshi

Within Ex parte Doshi there is a dissent related to "grounds of rejection":

At the time that the Appeal Brief was filed, our rules required Appellant to provide “[a] concise statement of each ground of rejection presented for review.” 37 C.F.R. § 41.37(c)(1)(vi) (2010) (emphasis added). Appellant also was required to present “[t]he contentions of appellant with respect to each ground of rejection presented for review in paragraph (c)(1)(vi) of this section, and the basis therefor, with citations of the statutes, regulations, authorities, and parts of the record relied on. . . . Each ground of rejection must be treated under a separate heading.” 37 C.F.R. § 41.37(c)(1)(vii) (2010) (emphasis added).

The Federal Circuit has explained that a ground of rejection “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.” Hyatt v. Dudas, 551 F.3d 1307, 1312 (Fed. Cir. 2008) (discussing predecessor to 37 C.F.R. § 41.37(c)(1)(vii)). Thus, when claims are rejected under § 103(a) as obvious over different combinations of references, they are subject to different grounds of rejection. Id. (discussing In re McDaniel, 293 F.3d 1379, 1384-85 (Fed. Cir. 2002)).

Here, the Examiner properly identified each separate ground of rejection. In all, the Examiner asserted ten different grounds of rejection against the ’906 application’s claims (e.g., Office Action 4, 5, 6 (June 23, 2010)).1

Appellant’s Brief, however, only identifies parts of three of these grounds of rejection as being presented for review.


Rather than simply applying our rules, the panel majority improperly infers what it thinks Appellant’s unstated arguments would have been. In particular, the panel majority states that Appellant has (1) identified the “contested issues” raised on appeal and (2) clearly stated that these contested issues are applicable to the Examiner’s alleged failure to carry the burden of establishing a prima facie case of non-patentability (obviousness) for all of the rejected appealed claims (Maj. Op. 5-6 (citing Br. 5)). The panel majority then states that “[Appellant’s] arguments . . . respecting the rejection of the independent claims require our corresponding consideration in determining the merits of the Examiner’s obviousness position with respect to all of the appealed dependent claims” (Maj. Op. 6-7 (citing App. Br. 5) (emphasis added)). I cannot join these findings for several reasons.

First, our rules require the appellant to state each ground of rejection presented for review. Thus, our rules are unlike the Federal Rules of Appellate Procedure, which merely require identification of the issues presented for review. Compare 37 C.F.R. § 41.37(c)(1)(vi) with Fed. R. App. P. 28(a)(5). By requiring an appellant to state the grounds of rejection presented for review, our rules impose a higher burden than that imposed by the Courts of Appeal. There can be no argument that Appellant failed to meet this burden and therefore failed to present seven grounds of rejection to us for our review. We should not excuse Appellant’s failure to comply with 37 C.F.R. §§ 41.37(c)(1)(vi) and 41.37(c)(1)(vii). (...)

Second, the majority is assuming that Appellant correctly identified the claims on appeal and erred by failing to provide any argument in support of reversing the unpresented grounds of rejection. It also might be that Appellant decided not to include any argument regarding the dependent claims and erred by identifying them being the subject of appeal. Once again, the majority is attempting to read Appellant’s mind. This is a road we should not begin to go down.

Third, I cannot join the majority’s conclusion that we are required to reverse the unpresented grounds of rejection. We are not required to hunt through the record on appeal seeking facts that support an appellant’s position, cf. Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1351 (Fed. Cir. 2000) (refusing to search record to discover evidence in support of appellant’s arguments). Neither are we required to infer an appellant’s intended arguments from an inadequate brief. “Judges are not like pigs, hunting for truffles buried in the briefs.” U.S. v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991). It is Appellant’s responsibility to provide the Board with argument, facts, and reasoning sufficient to justify reversing the Examiner. Cf. OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc., 701 F.3d 698, 707 (Fed. Cir. 2012). The requirement that appellant provide sufficient reasoning applies with equal force to issues of law and issues of fact. See Nazomi Commc’ns, Inc. v. Arm Holdings, PLC, 403 F.3d 1364, 1371 (Fed. Cir. 2005). Where, as here, an appellant fails to present any argument with respect to a particular ground of rejection, we are not required to—and we should not, as a prudential matter—conduct such an analysis in the first instance. In this case, the majority’s guess as to what Appellant intended to argue regarding the unpresented grounds of rejection very likely is correct. Other cases will not be so easy.


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