Federal Register, Volume 75, Number 219, November 15, 2010, Pages 69571-69850 Page: 69,835
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Federal Register/Vol. 75, No. 219/Monday, November 15, 2010/Proposed Rules
flexibility to appellants. This suggestion
was not adopted because the formats
received under the current rule vary
widely, with some summaries
containing little to no useful
information. It is important to impose a
specific format for this rule to ensure
that the Board obtains the information
that will be most useful. This
requirement for a strict format has been
offset with a lessening of the burden on
appellants by requiring annotation only
for those elements in dispute. Also, the
proposed rule is more flexible than the
current rule in that it allows citation to
paragraph number, rather than limiting
citations to page and line number of the
specification.
The Office received another comment
that the current rule is sufficient to
provide an "easy reference guide * * *
to the relevant sections of the
specification" and that a more detailed
requirement (such as that proposed in
the ANPRM) is unnecessary. In drafting
the proposed rule, the current rule was
used as the basis for the revisions, rather
than the rule proposed in the ANPRM.
Proposed Bd.R. 41.37(c)(1)(v) would
provide a less detailed requirement than
Bd.R. 41.37(c)(1)(v) because the
proposed rule requires annotation only
for those elements in dispute.
The Office received another comment
suggesting that if appellant does not
identify structure for a 112, 6
analysis, then "for purposes of the
appeal" such limitations should not be
limited to their corresponding structure
under 112, T 6. In light of the Federal
Circuit's decision in In re Donaldson
Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994)
(en banc), in which the court held that
the Office "may not disregard the
structure disclosed in the specification
corresponding to [means-plus-function]
language when rendering a patentability
determination," the Board cannot ignore
the structure corresponding to a means
plus function limitation to decide an
appeal. As a compromise, the proposed
rule does not require appellant to
provide claim mapping for a 112, 6
limitation if that limitation is not in
dispute.
Appeal Brief-Content of Appeal
Brief-Grounds of Rejection To Be
Reviewed on Appeal
Bd.R. 41.37(c)(1)(vi) requires that the
appeal brief include a statement of the
grounds of rejection. The proposed rule
eliminates the requirement for a
statement of the grounds of rejection
from the brief. Under Proposed Bd.R.
41.31(c), discussed supra, the Board
would presume that all rejections made
in the Office Action from which theappeal was taken are before it on appeal,
unless appellant cancels the claim(s)
subject to a particular rejection.
Moreover, under Proposed Bd.R.
41.37(c)(1)(vii), discussed infra, the
headings of the argument section of the
brief shall reasonably identify the
ground of rejection being contested.
Therefore, it is unnecessary for the
appeal brief to contain a separate
statement of the grounds of rejection on
appeal-a source of internal
inconsistency in appeal briefs filed
under the current rules.
Appeal Brief-Content of Appeal
Brief-Argument
Proposed Bd.R. 41.37(c)(1)(vii)
proposes to revise the current rule to
clarify that the argument section should
specifically explain why the examiner
erred as to each ground of rejection
contested by appellants. The proposed
revision would also provide that, except
as provided for in Proposed Bd.R. 41.41,
41.47, and 41.52, any arguments not
included in the appeal brief will not be
considered by the Board "for purposes
of the present appeal." Additionally,
Proposed Bd.R. 41.37(c)(1)(vii) would
require that each ground of rejection
argued be set forth in a separate section
with a heading that reasonably
identifies the ground being argued
therein. Further, the proposed rule
would require that any claim(s) argued
separately or as a subgroup be placed
under a separate subheading that
identifies the claim(s) by number.
The ANPRM proposed to amend the
argument section of the brief to require
an explanation as to why the examiner
erred. The ANPRM also stated that any
finding or conclusion of the examiner
that is not challenged would be
presumed to be correct and that
appellant would waive all arguments
that could have been, but were not,
addressed in the argument section of the
brief.
The Office received a large number of
comments regarding the presumption of
examiner correctness language in the
ANPRM. Several comments stated that
the proposed presumption of examiner
correctness language improperly placed
the burden of persuasion on appellants
to show error in the examiner's
rejection, is inconsistent with the
statutory requirements of the Board, and
is inconsistent with case law. Other
comments noted concern that the
duration and scope of the presumption
of examiner correctness was not made
clear in the proposed language of the
ANPRM. Another comment noted that it
is difficult to respond to all "points"
stated by the examiner when the
examiner's positions are not clearlycomments expressed concern that such
a presumption would force appellants to
contest every point made by the
examiner instead of allowing them to
focus the issues for appeal. In response
to these comments, the proposed rule in
this NPRM omits the presumption of
examiner correctness from the rule.
One comment suggested that the
argument section of this rule should be
changed to read, "The 'argument' shall
explain why the examiner erred as to
each ground of rejection to be reviewed.
Each ground of rejection shall be
separately argued under a separate
heading." The proposed rule
substantially adopts this suggested
language.
The Office received further comments
regarding the waiver language of this
portion of the ANPRM. Specifically, the
Office received some comments that the
waiver provision would limit the
Board's ability to independently review
the examiner's rejections and base the
decision on the entire record on appeal.
Other comments stated that the waiver
provision would lead to piecemeal
review of the examiner's rejection. One
comment suggested that, if the Board
adopted this waiver language, the Board
should also limit the review of the
examiner's answer to the facts and
reasons set forth therein. One comment
distinguished between Federal Circuit
waiver cases and BPAI waiver cases,
because at the Federal Circuit both sides
are precluded from raising new issues
on appeal, whereas at the Board the
examiner may raise new issues.
The proposed rule in this NPRM
omits the waiver language from the rule.
Nonetheless, the case law supports the
Office's position on waiver, so despite
the waiver language not being included
in the rule, the Board will still treat as
waived, for purposes of the present
appeal, any arguments not raised by
appellant. See Hyatt v. Dudas, 551 F.3d
1307, 1313-14 (Fed. Cir. 2008) (the
Board may treat arguments appellant
failed to make for a given ground of
rejection as waived); In re Watts, 354
F.3d 1362, 1368 (Fed. Cir. 2004)
(declining to consider the appellant's
new argument regarding the scope of a
prior art patent when that argument was
not raised before the Board); and In re
Schreiber, 128 F.3d 1473, 1479 (Fed.
Cir. 1997) (declining to consider
whether prior art cited in an
obviousness rejection was non-
analogous art when that argument was
not raised before the Board).
The Office received another comment
noting concern that the scope of the
"waiver" is unclear, and noting that
appellants should not be precludeddelineated in the Office action. Other
69835
from making arguments during
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United States. Office of the Federal Register. Federal Register, Volume 75, Number 219, November 15, 2010, Pages 69571-69850, periodical, November 15, 2010; Washington D.C.. (https://digital.library.unt.edu/ark:/67531/metadc52800/m1/271/: accessed April 23, 2024), University of North Texas Libraries, UNT Digital Library, https://digital.library.unt.edu; crediting UNT Libraries Government Documents Department.