In re Lovin

• Decision Date: 06 December 2011
• Docket Number: No. 2010–1499.,2010–1499.
• Citation: 99 U.S.P.Q.2d 1373,652 F.3d 1349
• Parties: In re Jeff LOVIN, Robert Adams, and Dan Kuruzar.
• Court: U.S. Court of Appeals — Federal Circuit

652 F.3d 1349

99 U.S.P.Q.2d 1373

In re Jeff LOVIN, Robert Adams, and Dan Kuruzar.

No. 2010–1499.

United States Court of Appeals, Federal Circuit.

July 22, 2011.Rehearing En Banc Denied Dec. 6, 2011.

James R. Burdett, Barnes & Thornburg, LLP, of Washington, DC, argued for appellant. With him on the brief were Richard B. Lazarus; and Thomas J. Donovan, of Chicago, IL.Scott C. Weidenfeller, Associate Solicitor, Office of the Solicitor, United States Patent and Trademark Office, of Alexandria, VA, argued for appellee. With him on the brief were Raymond T. Chen, Solicitor, and Nathan K. Kelley, Associate Solicitor.Before BRYSON, MAYER, and DYK, Circuit Judges.DYK, Circuit Judge.

Appellants Jeff Lovin, Robert Adams, Dan Kuruzar, and Dietmar Spindler ¹ (collectively “Lovin”) appeal a decision of the Board of Patent Appeals and Interferences (“Board”) insofar as that decision held that claims 1–15, 17–24, and 30–34 of U.S. Patent Application No. 10/924,633 (the “'633 application”) would have been obvious. See Ex parte Lovin, No. 2009–007018 (B.P.A.I. Feb. 25, 2010) (“ Board Decision ”). We affirm.

Background

On August 24, 2004, Lovin filed the '633 application directed to “a method and system of friction welding.” J.A. 103. In friction welding, a first part is rotated rapidly and brought into contact with a second part so that the heat generated between the parts fuses them together. This causes material from the parts to be displaced or “upset,” reducing the combined lengths of the welded parts. The invention of the '633 application is designed to decrease the variation in upset between parts from repeated use of the welding machinery. This is done by modulating the torque applied to the rotating first part.

The '633 application has 34 claims. Claims 1, 8, 17, 23, 30, and 34 are independent claims; the remaining claims depend therefrom. Independent claim 1 is illustrative. The first step of this two-step method involves acquiring data during the welding of two sample parts and “calculating a profile” from the acquired data, including “determining the upset formation” of the sample parts at a variety of different speeds. J.A. 70. The second step involves friction welding two production parts and “continuously modulating the torque applied” to the first production part in accordance with the profile so that the “upset formation” of the production parts “substantially duplicates the upset formation of the ... sample parts.” Id.

At the heart of this dispute is whether Lovin, in his appeal brief before the Board, adequately provided arguments for the separate patentability of certain claims pursuant to 37 C.F.R. § 41.37(c)(1)(vii) (“Rule 41.37”). Rule 41.37 sets forth the requirements for argument in an appeal brief before the Board. It provides in relevant part:

(vii) Argument.... For each ground of rejection applying to two or more claims, the claims may be argued separately or as a group. When multiple claims subject to the same ground of rejection are argued as a group by appellant, the Board may select a single claim from the group of claims that are argued together to decide the appeal with respect to the group of claims as to the ground of rejection on the basis of the selected claim alone. Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately. Any claim argued separately should be placed under a subheading identifying the claim by number. Claims argued as a group should be placed under a subheading identifying the claims by number. A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.

37 C.F.R. § 41.37(c)(1)(vii) (2007) (emphasis added).

Throughout prosecution before the examiner, Lovin had presented arguments with respect to the independent claims, but did not provide separate arguments for the dependent claims. See, e.g., J.A. 198 (broadly applying conclusions about independent claim 1 to dependent claims 2–7 and 10–15, which were not separately argued). Even with respect to the independent claims, Lovin merely repeated the claim language and stated that the prior art did not contain those features. The examiner eventually rejected claims 1–24 and 30–34 for obviousness over three prior art references: (1) U.S. Patent No. 3,712,528 (“Takagi”); (2) U.S. Patent No. 4,757,932 (“Benn”); and (3) U.S. Patent No. 6,362,456 (“Ludewig”).

Lovin filed his appeal brief to the Board on August 4, 2008. For the first time, Lovin attempted to address the patentability of the dependent claims by listing each claim under a separate subheading with separate arguments. While his arguments for independent claims 1 and 30 were relatively well-developed, his arguments for the dependent claims and the remaining independent claims were not. For the dependent claims, Lovin adopted the arguments from the corresponding independent claims, but with respect to the additional elements of the dependent claims, Lovin simply asserted that these elements were not present in the prior art and asserted non-obviousness over the combined teachings of the prior art. Lovin's argument for claim 11 demonstrates his general approach:

Claim 11 is dependent on claim 1 and adds the step of “braking the one sample part during rotational deceleration of the one sample part.” Claim 11 thus recites the additional braking step for which there is no corresponding step taught or suggested in any of Benn et al., Takagi et al, and Ludewig et al. The office action does not explain the lack of a teaching or suggestion of the step of claim 11 in the prior art. For at least this reason, and the reasons noted above with respect to claim 1, the combination of Benn et al. Takagi et al. and Ludewig et al. would not arrive at the claimed subject matter and the claimed subject matter would not have been obvious.

J.A. 61 (emphases added). Similarly, Lovin's arguments for independent claims 8, 17, 23, and 34 merely adopted his arguments for independent claims 1 and 30, but did not explain why the additional features in those claims should be separately patentable. The examiner's answer responded to the arguments for each claim, citing the column and line number where the disputed elements could be found in the prior art. Lovin, however, declined to submit a reply to the examiner's answer.

The Board affirmed the examiner's rejection of claim 1 as obvious over the prior art. With regard to independent claims 8, 17, and 23, the Board found that Lovin had provided the “same rationale” for non-obviousness as for claim 1. Namely, Lovin disputed whether the prior art “continuously modulat[ed] the torque” applied to the first part. Because the Board found that one skilled in the art would have known to combine the teachings of Benn and Takagi to control the torque, the Board held that claims 1, 8, 17, and 23 would have been obvious.

The Board also affirmed the examiner's rejection of claim 30 as obvious over the prior art. With regard to independent claim 34, the Board found that Lovin had applied the same rationale as applied to claim 30. Namely, Lovin disputed whether the prior art contained a “logic controller means” for storing certain information. The Board determined that Benn taught a microprocessor memory storing similar information and held that claims 30 and 34 would have been obvious.

The Board also affirmed the examiner's rejection of all the dependent claims, concluding that Lovin merely “point[ed] out what the claims recite and then assert[ed] that there [was] no corresponding combination of steps taught or suggested in the applied references.” Board Decision, slip op. at 3. Invoking Rule 41.37, the Board concluded that: “[M]erely pointing out the differences in what the claims cover ... is not a substantive argument as to the separate patentability of the claims. Accordingly, claims 2–15 and 17–24 stand or fall with claim 1, and claims 31–34 stand or fall with claim 30.” Board Decision, slip op. at 3–4.

Lovin sought rehearing with respect to claims 2–15, 17–22, and 24, arguing that the Board had overlooked his separate patentability arguments and should have separately considered each claim. In denying rehearing, the Board held that Lovin's cursory arguments with respect to these claims did not satisfy Rule 41.37 because “the [a]ppellants' statement as to what each claim recites, followed by a statement that there is no corresponding step in the applied references, is tantamount to merely pointing out the differences in what the claims cover, and i[s] not a substantive argument as to the separate patentability of the claims.” Ex parte Lovin, No. 2009–007018, slip op. at 4–5 (B.P.A.I. May 19, 2010); see also 37 C.F.R. § 41.37(c)(1)(vii) (2007). Judge Kratz dissented from the denial of rehearing and urged that some of the claims should have been separately considered. Appellants timely appealed, and we have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).

Discussion

On appeal, Lovin does not challenge the Board's rejection of independent claims 1 and 30 as obvious. The question, then, is whether the Board correctly interpreted Rule 41.37 in refusing to separately address the obviousness of claims 2–15, 17–24, and 31–34. Because these contested claims were treated as dependent claims,² we refer to them as dependent claims for the sake of convenience.

Lovin argues that his appeal brief before the Board satisfied Rule 41.37 because it contained separate headings and substantive arguments for each dependent claim. Lovin maintained that the only requirement for substantive argumentation for dependent claims is that the applicant “point out the essential elements as compared with prior claims and the inapplicability of the cited references, which ha[d] previously...