Update on Precedential Opinions from the BPAI

Since the beginning of the year, the PTO has released two new precedential decisions:

Ex Parte Letts, Appeal 2007-1392, January 31, 2008 (link)

Instead of separately arguing each claim under a subheading as required by 37 C.F.R. § 41.37(c)(1)(vii), the Appellant in this case generally argued features without making specific references to the claims.

During the Appeal, Appellant offered to cancel the broadest claim set (claim 7), contingent upon the resolution of the other claims sets (claims 1 and 15). While the offer to cancel was made through the Reply Brief, no cancellation was made. Since the Appellant's arguments were not claim specific, the BPAI merits board selected the broadest claim (claim 7), for deciding the appeal. Affirming the rejection to claim 7, the Board applied that result to all of the appealed claims.

On rehearing, the expanded board formally held that contingent arrangements are not to be accepted by the BPAI - appellants must either argue or cancel claims appropriately:

As a matter of policy, based on a need for efficient handling of the ex parte appeal and inter partes interference dockets, the Board of Patent Appeals and Interferences (“Board”) does not enter into contingent arrangements in which the withdrawal or dismissal of a claim is conditioned upon commitments to or restrictions on future Board action . . . Thus, an Appellant in an ex parte appeal may not seek to have a claim withdrawn or dismissed from an appeal based on a condition that the Board take or refrain from taking action on one or more other claims. If an Appellant wants an appeal withdrawn or dismissed as to a particular claim, the proper course of action is to file an amendment canceling the claim.

The saving grace for the Appellants in this case was that (1) the case was one of first impression, and (2) it was clear that everyone understood that claim 7 was to be canceled. Accordingly, in "an abundance of fairness", the expanded board remanded claims 1 and 15 for further consideration that is consistent with the features contained in those claims that were argued by Appellants.

Lest anyone gets any wise ideas from this decision, the Board added:

In taking the action we take today, we wish to make clear that publication of this opinion is intended to put appellants on notice of the ineffectiveness of a conditional withdrawal of a claim. With this notice, appellants should not expect the Board in the future to exercise discretion to permit them from avoiding the consequence of such an approach. Adherence to the requirements of the rules is essential if the Board is to efficiently handle the increasing docket of ex parte appeals it is currently receiving.

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Ex Parte Nehls et al., Appeal 2007-1823, Decided: January 28, 2008 (link)

The 271 Blog covered this important (albeit bizarre) 35 U.S.C. 101 decision back in February (link), where the expanded board held that utility must be "substantial" and "specific." Shortly after the blog post went up, the USPTO posted the decision as "precedential."