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CAFC Scolds PTO On Taking 3 Years To Deal With Appeal

By Peter Zura

In Re Reuning (2007-1535), April 25, 2008 (nonprecedential)

The applicants filed an application in 2001 under a petition to make special in order to accelerate examination. Two years later, the BPAI issued a first decision reversing the rejections on 2 claims, but sustaining the rejection to the other 64 claims, noting that "the appellants have not presented any patentability arguments for these claims." Aside from the procedural issues, no further analysis was given on the merits of reference-specific arguments made on the prior art.

The applicants filed a Request for Rehearing, which the BPAI granted, but refused to modify its original decision, concluding that the applicants "never explained how the limitations of the noted claims are patentable over the combined teachings of the applied references . . . Arguments pointing out the individual shortcomings in each of the applied references are not effective in overcoming a prima facie case of obviousness."

On appeal to the CAFC, the court stated that the applicants "misapprehended" the BPAI's decision, noting that none of the rejected claims contained the limitations which prompted the reversal. Also, the CAFC noted that the applicants admitted that each of the elements in the reversed claim "is known in the art." As a result, "[h]aving acknowledged that certain claim elements are taught by the prior art, Reuning cannot now defeat an obviousness rejection by asserting that the cited references fail to teach or suggest these elements."

The PTO also argued to the CAFC that the court should vacate and remand the decision to consider the merits of Reuning's arguments (since the appeal was based on a procedural issue). Finding this the "proper course," the CAFC vacated and remanded the application to the BPAI.

Which brings us to Judge Linn's concurring opinion:

After twice denying Reuning a substantive review of claims 3-66?and taking over three years in the process?the Board, via the Director, now requests that we remand so that the Board can do what it should have done in the first place; namely, substantively review the examiner?s rejection of claims 3-66. By taking nearly three years to decline to adjudicate the merits of claims 3-66 on a procedural technicality, and by forcing Reuning to appeal before recognizing the superficial nature of its actions, the Board squandered judicial resources and needlessly frustrated Reuning?s interests. This is not a reflection of the Board?s finest work.

Although I assign the lion?s share of the blame to the Board for this case?s current posture, I wish to make clear that Reuning also is not without fault. He compounded the problem, and in a sense, invited the Board?s error, by unduly focusing on claim 1 in his appeal briefs and relying on happenstance for the Board to fill in the gaps. Although not technically improper, Reuning?s appeal brief to the Board was less than comprehensive and demonstrates the adverse consequences that may flow from arguments that are in some measure left to inference.

The end result is that as to claims 3-66, the parties are now back to where they started, albeit without the time and money it took them to get there. This wasteful course of proceedings does not promote the fair and efficient administration of justice and is inconsistent with the PTO?s mission "to ensure that the intellectual property system contributes to a strong global economy, encourages investment in innovation, and fosters entrepreneurial spirit." . . . I have the utmost respect for the members of the Board, the leadership of the PTO, and the members of the patent bar, and while I would like to believe that this case represents an aberration from the standards of practice I have long admired and have come to expect, I am concerned that it does not.

Full post as published by Two-Seventy-One Patent Blog on April 29, 2008 (boomark / email).