Patent Law

Ex parte Nakashima (BPAI 2010); Ex parte Borden (BPAI 2010)

Two recent expanded-panel BPAI decisions both consider the situation where a patent applicant presents arguments in a reply brief even though the arguments could have been raised by in the principal brief.  Interpreting the regulations of 37 CFR 41, both decisions hold that the Board is not required 'to consider such belated arguments' unless the applicant presents 'good cause' for the delay in presentation.

'[W]e take this opportunity to explain that the regulations governing Appeals to the Board require that any argument not timely presented in the principal Brief, will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Principal Brief.' Nakashima.

Rule 41 does not discuss the potential content of a reply brief other than to note that the reply brief 'shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other evidence. 37 C.F.R. § 41.41(a)(2) (2007). Prior to 1998, Rule 41 required that reply brief content focus only on points newly raised in an examiner's answer.  That limitation, however was eliminated in the 1998 rule modifications. Despite this change, the BPAI panels both held that the 'scope of the reply brief was never expanded to include belated arguments or new arguments unaccompanied by a showing of good cause.'

No New Nuances: A no-new-arguments rule is a common rule in all types of court systems.  However, the rule as implemented in Nakashima appears that it could be better stated as no-new-nuances. Nakashima argued in its principal brief that the examiner's obviousness rejection was incorrect. The 'new' argument presented in the reply brief still focused on obviousness and the same two references, but provided a new justification for a non-obviousness conclusion. In particular, Nakashima's opening brief argued (1) that the examiner's suggested combination of prior art teachings would 'destroy' the functionality of the claimed vacuum apparatus and (2) that the examiner was incorrect in his assertion that one of the references taught a 'inner belt.'  The reply brief added the nuance that there is 'no reason to combine' the two prior art references because the result would not have been desirable.  According to the Board, the 'no reason to combine' argument was new and therefore, the Board refused to address that issue.

Writing in dissent in Nakashima, Administrative Patent Judge Terry Owens argued that the patent applicant had a right to include new arguments in its reply brief.  Owens quotes the PTO's comments associated with the 1998 rule change found in 62 Fed. Reg. 53168: 'The former practice of permitting reply briefs based solely on a finding of a new point of argument [in the examiner answer] is eliminated thereby preventing present controversies as to whether a new point of argument has been made by the primary examiner.'

Notes:

• On remand and after filing an RCE, Nakashima should be able to argue its new points to the examiner and perhaps reach the Board again in three-years.
• The Nakashima application is owned by Brother (Japan) and is being prosecuted by the Oliff & Berridge firm (DC).
• The Borden application is owned by Sharp (US) and is being prosecuted by the Chernoff firm (Oregon).