In re Bogese

• Decision Date: 13 September 2002
• Docket Number: No. 01-1354.,01-1354.
• Parties: In re Stephen B. BOGESE II.
• Court: U.S. Court of Appeals — Federal Circuit

303 F.3d 1362

In re Stephen B. BOGESE II.

No. 01-1354.

United States Court of Appeals, Federal Circuit.

September 13, 2002.

Perry J. Saidman, Saidman DesignLaw Group, of Silver Spring, MD, for appellant.

John M. Whealan, Solicitor, Office of the Solicitor, United States Patent and Trademark Office, of Arlington, VA, for appellee. With him on the brief were Henry G. Sawtelle and Linda Moncys Isacson, Associate Solicitors.

Before NEWMAN, DYK, and PROST, Circuit Judges.

DYK, Circuit Judge.

Stephen B. Bogese II ("Bogese") appeals from a decision of the Board of Patent Appeals and Interferences ("Board") rejecting all claims of his application for patent, serial number 08/376,290 ("the '290 application"). Ex parte Bogese II, Appeal No.1998-1360 (Bd. Pat. Apps. & Int., Sep. 25, 2000). The Board held that the claims were unpatentable under 35 U.S.C. § 103 and that Bogese had forfeited his right to a patent under the doctrine of prosecution history laches. Because the Board's decision that Bogese had forfeited his right to a patent was not arbitrary, capricious, or contrary to law, we affirm. Because we hold that Bogese forfeited his right to a patent, we do not reach the issue of whether the claims are unpatentable under 35 U.S.C. § 103.

BACKGROUND

Bogese's alleged invention relates to "[a]n electrical connector ... serv[ing] as an interface between a standard miniature telephone plug and a printed circuit board." More particularly, the invention relates to a connector for use with both miniature telephone plugs and printed circuit boards, which are designed using different standards. The invention permits quick connections between telephone wires and electrical connectors used in computers.

This case has a long history. The '290 application at issue here claims priority back to the June 14, 1978, filing date of application serial number 05/915,457 ("the '457 application"). No patent issued from the '457 application, which was abandoned in favor of a continuation application, serial number 06/120,846 ("the '846 application"), on February 12, 1980.¹ Prosecution of the '846 application twice reached this court on appeal from a Board rejection. On March 23, 1984, we affirmed-in-part and reversed-in-part the Board's rejection and remanded the case to the Board. In re Bogese, 732 F.2d 169 (Fed.Cir.1984) (Table) (unpublished opinion). We affirmed the Board's rejection of Bogese's broad claims but reversed its rejection of Bogese's narrow claims directed to telephone modular jack connectors because we concluded that a particular reference not relied on by the Board was pertinent, and Bogese had not had an opportunity to address an argument that those narrow claims were obvious in light of that and other references. On March 16, 1987, we summarily affirmed the Board's rejection of all pending claims as obvious under 35 U.S.C. § 103 in a two sentence opinion. In re Bogese, 818 F.2d 877 (Fed.Cir.1987) (per curiam) (Table) (unpublished opinion).²

After our second decision, on April 6, 1987, Bogese filed a file wrapper continuation application, serial number 07/033,855 ("the '855 application") and abandoned the '846 application.³ Bogese did not amend the claims that were the subject of our March 1987 decision, nor did he offer any argument addressing the rejection of those claims. Therefore, on July 13, 1987, the examiner issued a final rejection of all claims of the '855 application on the basis of our 1987 decision and as obvious in light of several prior art references.

On January 13, 1988, Bogese filed a new file wrapper continuation application, serial number 07/144,687 ("the '687 application"),⁴ and then abandoned the '855 application. Again, Bogese did not amend the claims that previously had been rejected by the PTO and this court or make any argument that the claims should be allowable. Therefore, the examiner again issued a final rejection on April 26, 1988. On October 26, 1988, Bogese filed a file wrapper continuation application, serial number 07/267,724 ("the '724 application"), and then abandoned the '687 application. Bogese's pattern of receiving a final rejection from the PTO, not amending his application or claims, filing a file wrapper continuation application exactly or almost exactly six months later without any amendments, and abandoning his prior application, occurred eight more times between 1989 and 1994, culminating in the filing of application serial number 08/266,804 ("the '804 application") on June 28, 1994.

In the examiner's final rejection of the '804 application mailed on August 22, 1994, the examiner expressly warned appellant:

[T]he next continuation of this series may be rejected by invoking the equitable doctrine of laches, absent any substantive amendment to advance prosecution.

The doctrine of laches, meaning undue delay in claiming one's rights, may result in the loss of those rights. In this case, the loss may be the right to a priority date, or the right to a patent. The case record shows a plurality of continuations with no substantive amendments to advance prosecution, which, in effect, may be using the Patent Office and patent laws as a means for officially suppressing or overlooking any invention disclosed, but not yet claimed, thereby obtaining inequitable benefits of the patent system.

Priority of invention requires reasonable diligence of one first to conceive, and last to reduce to practice (filing and claiming). See 35 U.S.C. § 102(g).

Prompt disclosure to the public, with no undue delay, is required for consideration of a patent grant. See Ex parte Hull, 191 USPQ 157, 1975 WL 20742 [USPTO Bd. of Apps.] 1975.

(Emphasis added).

Despite the examiner's warning, on January 23, 1995, Bogese filed another file wrapper continuation application, serial number 08/376,290 ("the '290 application") without making any amendment or argument regarding the claims that had been rejected. In an Office action mailed March 16, 1995, the examiner rejected all the pending claims for three reasons: "on the doctrine of Res Judicata based on the decision of the Court of Appeals for the Federal Circuit dated March 16, 1987"; as being unpatentable under 35 U.S.C. § 103 in view of several prior art references; and because "applicant has forfeited the right to a patent." The examiner explained the last reason as follows:

Applicant has pursued a deliberate and consistent course of conduct that has resulted in an exceptional delay in advancing the prosecution and the issuance of a patent. The record shows that a decision by the Court of Appeals for the Federal Circuit dated March 16, 1987, for application 06/120,846, which is a continuation of 05/915,457, filed June 14, 1978. Subsequent to the above CAFC decision, Applicant has filed 11 patent applications in which Applicant has clearly made no attempt to advance the examination of the claimed invention. The effect has been to postpone the issuance and term of a patent that it would appear that applicant has always intended to secure. Applicant has deliberately postponed meaningful prosecution, deliberately postponed the grant of any patent to which he may be entitled, and deliberately postponed the free public enjoyment of any invention on which a patent may have issued. These deliberate actions are an evasion of the patent statute and defeat its benevolent aim. Woodbridge v. United States, 263 U.S. 50, 44 S.Ct. 45, 68 L.Ed. 159 (1923).

On September 18, 1995, Bogese for the first time made a substantive response to the Office action by amending the claims of the '290 application and submitting affidavits in support of his arguments that his claimed invention was not obvious. Bogese also traversed the forfeiture rejection, urging that "[i]t cannot be the law that one who has complied with clear statutory authority in all respects has somehow forfeited his right to a patent." Bogese urged that at all times during prosecution of his chain of applications he had complied with the requirements of 35 U.S.C. § 120, and therefore, was entitled to the benefit of the original June 14, 1978, priority date and to a patent. The examiner was not persuaded by Bogese's amendments and arguments and, on November 28, 1995, again rejected all the pending claims. Following a December 31, 1995, request for reconsideration and February 21, 1996, Advisory Action, appellant filed a notice of appeal to the Board on November 8, 1996.

In its September 25, 2000, decision the Board refused to sustain the examiner's rejection based on res judicata because Bogese, in response to the examiner's rejection, had amended his claims after they had been rejected by this court in our 1987 decision. However, the Board sustained the examiner's rejection based on 35 U.S.C. § 103 because Bogese's claimed invention would have been obvious to one of ordinary skill in the art in light of the cited references. Furthermore, the Board sustained the examiner's rejection based on Bogese's forfeiture due to his delay in prosecuting the patent applications. The Board cited the general grant of power to the PTO to examine and issue patents (provided by 35 U.S.C. § 131) and a prior Board opinion, Ex parte Hull, 191 USPQ 157, 159, 1975 WL 20742 (1975), as providing the authority for the rejection based on forfeiture. The Board found that:

From our viewpoint, the conduct of the appellant from March 1987 until September 18, 1995, which effectively permitted the appellant to retain the benefit of the filing date of June 14, 1978 while at the same time delaying prosecution of the applications, is so egregious in defeating the policy of the patent laws of promoting science and the useful arts as to be presumed unreasonable in light of all the circumstances in this case. In particular, we note that, as evidenced by the documents filed in support of the petition to make special (Paper No. 13) in Application No. 06/120,846, which was granted (Paper No. 14), on the basis of infringing activity by...