In re McDaniel

• Citation: 293 F.3d 1379
• Decision Date: 19 June 2002
• Docket Number: No. 01-1307.,01-1307.
• Parties: In re C. Steven McDANIEL, Frank M. Raushel, and James R. Wild.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 1379

293 F.3d 1379

In re C. Steven McDANIEL, Frank M. Raushel, and James R. Wild.

No. 01-1307.

United States Court of Appeals, Federal Circuit.

June 19, 2002.

C. Steven McDaniel, McDaniel & Associates, P.C., of Austin, TX, argued for appellants.

Kristin L. Yohannan, Associate Solicitor, Office of the Solicitor, United States Patent and Trademark Office, of Arlington, VA, argued for appellee. With her on the brief were John M. Whealan, Solicitor; and Steven Walsh, Associate Solicitor.

Before MAYER, Chief Judge, LINN and PROST, Circuit Judges.

Opinion for the court filed by Circuit Judge LINN. Opinion dissenting-in-part filed by Chief Judge MAYER.

LINN, Circuit Judge.

Dr. C. Steven McDaniel, Dr. Frank M. Raushel, and Dr. James R. Wild (collectively "McDaniel") appeal from the decision of the United States Patent and Trademark Office, Board of Patent Appeals and Interferences ("Board") affirming the rejections of Claims 53-64 of McDaniel's Application No. 08/252,384 as unpatentable under 35 U.S.C. §§ 102(a) and 102(b) and finding it unnecessary to reach the rejections of the claims under 35 U.S.C. § 103. Ex parte McDaniel, No. 1997-2138 (Bd. Pat. Appeals & Interferences Jan. 8, 2001). Because substantial evidence supports the § 102 rejections of Claims 53-54 and 58-63, the Board did not err in affirming these rejections. However, the Board incorrectly interpreted 37 C.F.R. § 1.192(c)(7) to permit it to select Claim 53 as representative of separately rejected Claims 55-57 and, thus erred in failing to reach the § 103 rejections of those claims. The Board also committed procedural error in affirming the rejection of Claim 64 under § 102 rather than § 103, but such error was harmless.

BACKGROUND

McDaniel's `384 application relates to an organophosphorus detoxifying ("opd") gene and a recombinant organophosphorus acid anhydrase ("OPA") enzyme derived from that gene. This gene and enzyme are said to be useful in detoxifying organophosphorus compounds, which are commonly found in pesticides and in chemical warfare agents such as nerve gases. The application discloses the DNA sequence of the opd gene, the OPA enzyme derived from the opd gene, expression vectors comprising the opd gene, and transformed cells and transgenic organisms comprising the opd gene on an expression vector. The application also discloses methods for making and purifying the OPA, for using either the OPA itself or recombinant opd microorganisms to detoxify organophosphorus compounds, for detecting organophosphorus compounds in the environment, and for protecting beneficial insects against organophosphorus-based insecticides. Claims 53, 57, and 64 of the '384 application are reproduced below.

53. A method for detoxifying an organophosphorus compound comprising exposing said compound to recombinant bacterial organophosphorus acid anhydrase.

57. The method of claim 53 wherein said organophosphorus compound is in air.

64. A method of preventing poisoning of a locus by an organophosphorus compound by applying recombinant organophosphorus acid anhydrase to said locus before said compound contacts said locus.

Claims 53-64 of the '384 application were finally rejected on August 24, 1994. The grounds of rejection relevant to the present appeal are as follows.

Claims 53-54 and 58-63 were rejected under 35 U.S.C. § 102(a), or alternatively under 35 U.S.C. § 103, over C. Steven McDaniel et al., Cloning and Sequencing of a Plasmid Borne Gene (opd) Encoding a Phosphotriesterase, 170 J. Bacteriology 2306-11 (1988) ("McDaniel (BY)"), or over Linda L. Harper et al., Dissimilar Plasmids Isolated from Pseudomonas diminuta MG and a Flavobacterium sp. (ATCC 27551) Contain Identical opd Genes, 54 Applied and Envtl. Microbiology 2586-89 (1988) ("Harper").

Claims 53, 58, and 60 were rejected under 35 U.S.C. § 102(b) over J.R. Wild et al., Cloning, Sequencing and Characterization of OPD Genes and Their Broad Spectrum Organophosphate Hydrolases From Soil Bacteria in Proceedings of the 1986 U.S. Army Chemical Research, Development and Engineering Center Scientific Conference on Chemical Defense Research 629 (1986) ("Wild").

Claims 53-54 and 60 were rejected under 35 U.S.C. § 102(b) over Claude Steven McDaniel, Plasmid Mediated Degradation of Organophosphate Pesticides 111-64 (1985) (unpublished Ph.D. dissertation, Texas A & M University) (on file with the Texas A & M University Library) ("McDaniel (AZ)").

Claims 61-63 were rejected under 35 U.S.C. § 102(b), or alternatively under 35 U.S.C. § 103, over Wild or McDaniel (AZ).

Claims 53-54 and 59-64 were rejected under 35 U.S.C. § 103 over a combination of references, together with either McDaniel (BY) or Wild.

Claims 55-57 were rejected under 35 U.S.C. § 103 over the same combination of references, together with McDaniel (BY) or Wild, and further in view of Grot et al., U.S. Patent No. 4,518,650 ("Grot").

McDaniel appealed these rejections to the Board. Based on McDaniel's statement that "[c]laims 53-64 are all properly of a single group," the Board grouped all the claims together on appeal, and selected claim 53 as representative of the entire group. Ex parte McDaniel, slip op. at 5. The Board rejected McDaniel's argument that the Declaration of Invention filed with the '384 application was sufficient under In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982), to serve as a disclaimer of inventorship by Linda L. Harper and Dr. Charles E. Miller, who were listed as co-authors on the McDaniel (BY) and Harper references. Accordingly, the Board held that both McDaniel (BY) and Harper were proper § 102(a) prior art. Ex parte McDaniel, slip op. at 13. The Board then affirmed the § 102 rejections, applied to all of the claims. Having affirmed the § 102 rejections, the Board then found it "unnecessary to separately consider the rejection of the claims under 35 U.S.C. § 103." Id. at 17.

McDaniel timely appealed the Board's decision to this court, and we have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

A. Standard of Review

Our standard of review of a decision of the Board is set forth in the Administrative Procedure Act, 5 U.S.C. § 706. Dickinson v. Zurko, 527 U.S. 150, 154, 119 S.Ct. 1816, 144 L.Ed.2d 143, 50 USPQ2d 1930, 1932 (1999). Under that statutory provision, we will set aside legal actions of the Board that are "arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law," and set aside factual findings that are "unsupported by substantial evidence." 5 U.S.C. § 706 (2000); In re Gartside, 203 F.3d 1305, 1316, 53 USPQ2d 1769, 1775 (Fed.Cir.2000).

An agency's interpretation of its own regulations is normally entitled to considerable deference, and that interpretation ordinarily will be accepted unless it is plainly erroneous or inconsistent with the regulation. Bowles v. Seminole Rock & Sand Co., 325 U.S. 410, 414, 65 S.Ct. 1215, 89 L.Ed. 1700 (1945); Data Gen. Corp. v. Johnson, 78 F.3d 1556, 1561 (Fed. Cir.1996). However, this court in Dethmers Manufacturing Co., Inc. v. Automatic Equipment Manufacturing Co., 272 F.3d 1365, 1370, 60 USPQ2d 1929, 1932 (Fed. Cir. 2001), was constrained to apply not a deferential but a de novo standard of review to the Patent and Trademark Office's interpretation of its own reissue rule, citing Nupla Corp. v. IXL Manufacturing Co., 114 F.3d 191, 42 USPQ2d 1711 (Fed. Cir. 1997) and In re Constant, 827 F.2d 728, 3 USPQ2d 1479).

Anticipation is a question of fact. Rapoport v. Dement, 254 F.3d 1053, 1057, 59 USPQ2d 1215, 1218 (Fed.Cir.2001).

B. Analysis

I.

On appeal to the Board from a final rejection of claims by the Examiner, the claims are grouped in accordance with 37 C.F.R. § 1.192(c)(7):

For each ground of rejection which appellant contests and which applies to a group of two or more claims, the Board shall select a single claim from the group and shall decide the appeal as to that ground of rejection on the basis of that claim alone unless a statement is included that the claims of the group do not stand or fall together and ... appellant explains why the claims of the group are believed to be separately patentable. Merely pointing out differences in what the claims cover is not an argument as to why the claims are separately patentable.

(Emphasis added.) The Manual of Patent Examining Procedure ("MPEP"), in explaining this regulation, notes that it

requires the appellant to perform two affirmative acts in his or her brief in order to have the separate patentability of a plurality of claims subject to the same rejection considered. The appellant must (A) state that the claims do not stand or fall together and (B) present arguments why the claims subject to the same rejection are separately patentable.

MPEP § 1206 (8th ed. Aug.2001) (emphasis added).

The rule operates to relieve the Board from having to review—and an applicant from having to argue—the myriad of distinctions that might exist among claims, where those distinctions are, in and of themselves, of no patentable consequence to a contested rejection. For example, if two commonly rejected but patentably distinct claims are considered by an applicant to be patentably distinguishable over the cited art for reasons applicable to both claims, there is no reason why the Board, or an applicant for that matter, should have to be concerned with the distinctions between the claims themselves in the rejected group. If the applicant's commonly applicable reasons for patentability have merit, the rejection of both claims will be overcome, quite apart from any patentable distinctions that exist between the claims. The rule acts as the default that permits the Board to designate one claim to serve as representative of others in a commonly rejected group and to focus its attention on only those matters that are dispositive of the appeal, unless applicant overcomes the default to assure separate review of individual claims by meeting the two conditions specified in the...