DYK, Circuit Judge.
Appellants Jeff Lovin, Robert Adams, Dan Kuruzar, and Dietmar Spindler
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
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:
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
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).
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,
Lovin argues that his appeal brief before the Board satisfied Rule 41.37 because it
The Supreme Court has long recognized that an agency's construction of its own regulations is entitled to substantial deference. In Bowles v. Seminole Rock & Sand Co., 325 U.S. 410, 414, 65 S.Ct. 1215, 89 L.Ed. 1700 (1945), the Court deferred to the Office of Price Administration's interpretation of its own regulation and held that "the ultimate criterion [in determining the meaning of the regulation] is the administrative interpretation, which becomes of controlling weight unless it is plainly erroneous or inconsistent with the regulation." Similarly, in Auer v. Robbins, 519 U.S. 452, 461, 117 S.Ct. 905, 137 L.Ed.2d 79 (1997), the Court sustained the Secretary of Labor's interpretation of its own regulation as "controlling" in an overtime pay dispute. See also United States v. Cleveland Indians Baseball Co., 532 U.S. 200, 220, 121 S.Ct. 1433, 149 L.Ed.2d 401 (2001) (granting "substantial judicial deference" to the Internal Revenue Service's "longstanding" reasonable interpretation of its own regulations); Thomas Jefferson Univ. v. Shalala, 512 U.S. 504, 512, 114 S.Ct. 2381, 129 L.Ed.2d 405 (1994) (holding that the Department of Health and Human Services' interpretation of a regulation must be given "controlling weight unless it is plainly erroneous or inconsistent with the regulation"); Udall v. Tallman, 380 U.S. 1, 16, 85 S.Ct. 792, 13 L.Ed.2d 616 (1965) (holding that when a regulation must be interpreted, "a court must necessarily look to the administrative construction of the regulation if the meaning of the words used is in doubt").
Congress has delegated to the PTO the rulemaking power to "establish regulations, not inconsistent with the law, which... shall govern the conduct of proceedings in the Office." 35 U.S.C. § 2(b)(2) (2000); see also Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1282 (Fed. Cir.2005); Stevens v. Tamai, 366 F.3d 1325, 1333 (Fed.Cir.2004). It is well-established that deference is owed to decisions of the PTO in interpreting these regulations. In In re Garner, 508 F.3d 1376, 1378 (Fed.Cir.2007), we held that the PTO's interpretation of its own regulations is entitled to "substantial deference" unless the interpretation is "plainly erroneous or inconsistent with the regulation." See also Star Fruits, 393 F.3d at 1277 ("[The PTO's] interpretation of its own regulations is entitled to substantial deference and will be accepted unless it is plainly erroneous or inconsistent with the regulation."); In re Sullivan, 362 F.3d 1324, 1326 (Fed.Cir.2004) (same); Eli Lilly Co. v. Bd. of Regents of the Univ. of Wash., 334 F.3d 1264, 1266 (Fed.Cir.2003) (same).
Nonetheless, in Garner, 508 F.3d at 1378-79, and Dethmers Manufacturing, Inc. v. Automatic Equipment Manufacturing Co., 272 F.3d 1365, 1370 (Fed.Cir. 2001), we held that the PTO must still follow judicial interpretations of PTO regulations set forth in the decisions of our court. However, the Supreme Court has made clear that this obligation is not absolute. In National Cable & Telecommunications Association v. Brand X Internet Services, 545 U.S. 967, 982, 125 S.Ct. 2688, 162 L.Ed.2d 820 (2005), the Supreme Court examined whether the stare decisis
Lovin contends that our decisions in In re Nielson, 816 F.2d 1567 (Fed.Cir.1987), and In re Beaver, 893 F.2d 329 (Fed.Cir. 1989), represent such binding authority and should control the PTO's construction of Rule 41.37. However, neither of these cases directly confronted Rule 41.37 or its predecessor regulation, 37 C.F.R. § 1.192 ("Rule 1.192").
In Beaver, the applicant similarly provided little in the way of argument as to certain dependent claims. See 893 F.2d at 329-30. For instance, the following argument for a dependent claim was rejected by the Board:
Id. at 330. (emphasis added). The Board found that, "apart from merely summarizing the subject matter" and "asserting that the references do not disclose the recited structure, appellant does not separately argue the merits of these claims." Ex
Beaver does not compel rejection of the Board's rationale in this case for two reasons. First, the rule governing assertions of separate patentability has gone through multiple and significant revisions, and the governing Rule 41.37 is different from the predecessor Rule 1.192 that was in place at the time of Beaver. The first version of the regulatory language at issue was promulgated in June 1988 and was the version in place at the time of the Beaver decision. This version provided that, for grounds of rejection covering more than one claim, it would be "presumed that the rejected claims stand or fall together" unless the appellant makes a statement to the contrary and "presents reasons as to why [the] appellant consider[ed] the rejected claims to be separately patentable."
Because our prior authority does not foreclose the Board from interpreting Rule 41.37 or foreclose us from deferring to the Board's interpretation, we must now consider whether the Board's interpretation should prevail. In Star Fruits, our court made clear that the PTO had authority by rule to require applicants to provide information to the PTO. 393 F.3d at 1284. There is no contention here that the PTO exceeded its authority in interpreting Rule 41.37 to require that applicants separately and comprehensively argue dependent claims.
As we held in Sullivan, we accept the Board's interpretation of PTO regulations unless that interpretation is "plainly erroneous or inconsistent with the regulation." 362 F.3d at 1326. Rule 41.37 provides:
37 C.F.R. § 41.37(c)(1)(vii) (2007) (emphases added). We conclude that the Board has reasonably interpreted Rule 41.37 to require applicants to articulate more substantive arguments if they wish for individual claims to be treated separately.
We note also that the Board's interpretation of Rule 41.37 is not new to this case. Rather, it reflects the Board's consistent interpretation of that rule since it was promulgated in 2004.
In sum, we hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art. Because Lovin did not provide such arguments, the Board did not err in refusing to separately address claims 2-15, 17-24, and 31-34.
Fleming, Michael et al., Effective Appellate Advocacy in Ex Parte Appeals Before the Board of Patent Appeals and Interferences 4-5 (Apr. 2010) (emphasis added).