Intellectual Property Law

On appeal, BPAI cannot group claims that do not share a common reason for rejection

By McKee, Voorhees & Sease, P.L.C.

In a recent decision, the Federal Circuit affirmed a distirct court's vacatur of a decision of the Board of Patent Appeals and Interferences.  In an appeal of rejections in twelve different applications involving approximately 2,400 claims, the Board only addressed the rejection of 21 "represntative" claims pursuant to 37 C.F.R. § 1.192(c)(7) [now 37 C.F.R. § 41.37(c)(vii)].  The Board took this position that each of the claims in the groupings were rejected under the same statutory provision, even though the rejections were not necessarily based on the same limitations.

The district court held this was improper.  Specifically, the district court held the Board could only group claims if the basis for the rejection was the same, which requires both the same statutory provision and the same underlying basis for the rejection.  Here, because the rejections at issue were predominantly under the written description requirement, the district court held claims could only properly be grouped if the limitation that was allegedly not described was present in each of the grouped claims.

The Federal Circuit affirmed, agreeing with the district court's analysis.

More detail of Hyatt v. Dudas after the jump.

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Full post as published by FileWrapper on January 02, 2009 (boomark / email).