Thursday, October 10, 2013

Ex parte Pedlow illustrates the need to file proper appeal briefs

Ex parte Pedlow

The consequences of not challenging rejections with specificity:

For the foregoing reasons, we sustain the Examiner’s rejection of independent claim 1 as being unpatentable over Krishnamoorthi, Fiatal, and Blinn. We will also sustain the Examiner’s rejection of claims 3-9 as being unpatentable over of Krishnamoorthi, Fiatal, and Blinn for the reason that Appellants have not challenged such with any reasonable specificity (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)).


In the Reply Brief, Appellants, for the first time, cite limitations of independent claim 14 that differ from those of independent claim 1. These new assertions in the Reply Brief are not in response to any assertions set forth in the Examiner’s Answer, and are thus untimely and waived. 37 C.F.R. § 41.37(c)(1)(vii) (second sentence); see also In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (an argument not first raised in the brief to the Board is waived on appeal); cf. Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) (“Properly interpreted, the Rules do not require the Board to take up a belated argument that has not been addressed by the Examiner, absent a showing of good cause.”)


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