Ex Parte Doshi

Patent Trial and Appeal Board

Feb 8, 2013

11657906 (P.T.A.B. Feb. 8, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/657,906 01/24/2007 Tulsee Satish Doshi 5551
7590 02/08/2013
Richard A. Wilhelm
P.O. Box 171
Marylhurst, OR 97036-0171
EXAMINER
SAHA, BIJAY S
ART UNIT PAPER NUMBER
1732
MAIL DATE DELIVERY MODE
02/08/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TULSEE SATISH DOSHI
____________

Appeal 2011-009852
Application 11/657,906
Technology Center 1700
____________

Before PETER F. KRATZ, LINDA M. GAUDETTE, and
GEORGE C. BEST, Administrative Patent Judges.

Opinion for Board filed by Administrative Patent Judge KRATZ.
Opinion Dissenting-in-part filed by Administrative Patent Judge BEST.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s second or subsequent rejection of claims 1-7, 16, 17, and 19-27.
We have jurisdiction pursuant to 35 U.S.C. § 6.

Appeal 2011-009852
Application 11/657,906
2
The appealed subject matter is directed to a battery that includes a
thermal energy transfer element in addition to an anode, a cathode and an
electrolyte, and wherein a first portion of a thermally conductive core of the
thermal transfer element is included within a container with a portion thereof
in direct contact with the electrolyte within the container, the electrolyte also
being in direct contact with the anode and cathode. A second portion of the
thermally conductive core is located external to the container. The cell
container may serve as an electrode (Spec. ¶ 0022). According to Appellant,
the disclosed subject matter includes batteries with structures for transferring
thermal energy to and from the battery; however, the electrochemical,
oxidation-reduction reactions that occur are typically exothermic (id. at
¶¶ 0002 and 0003).
As Appellant explains, the thermally conductive transfer element is a
structure that can be arranged or placed such that at least a portion of a core
thereof is in direct contact with the electrolyte of the battery and another
core portion thereof is designed to be placed in an environment external to
the battery cell so as to provide for thermal conduction between the battery
and another portion to maintain the battery temperature within a desired
temperature range during storage, use, and recharging (id. at ¶¶ 0004-0007,
0022-0024, and 0027; Figs. 1-3). An alleged advantage of the disclosed
invention is said to be derived by providing a thermal transfer element with a
thermally conductive core portion within the container or cell in a non-
proximate (distinct) relation relative to the anode and cathode provided
therein (id. at ¶¶ 0021 and 0028).
As expressly stated in the Brief, “Appellant appeals the rejection of
claims 1-7, 16-17, and 19-27 under U.S.C. § 103(a)” (Br. 3). Appealed
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claims 1 and 16, the only independent claims on appeal (Br. 5 and 20-23;
Appendix A), are reproduced below (emphasis added):
1. A battery, comprising:
an anode, a cathode, and a container;
a thermal energy transfer element distinct from the anode and
cathode, and including a thermally conductive core having a
first portion located within the container and a second portion
located external to the container;
an electrolyte within the container in direct contact with at least
a part of the first portion of the thermally conductive core, the
anode, and the cathode,
wherein the first portion provides a path for conducting thermal
energy between the electrolyte and the second portion.
16. A battery comprising:
at least one cell container having bottom and side walls,
containing an electrolyte, and serving as a first electrode;
a second electrode having a first portion embedded in the
electrolyte and a second portion located external to the
electrolyte; and
at least one thermal energy transfer element spaced away from
the second electrode and the bottom and side walls of the cell
container, the thermal energy transfer element including a
thermally conductive core having a first portion located within
the cell container and in direct contact with and surrounded by
the electrolyte, and a second portion located external to the cell
container.

The Examiner maintains several grounds of rejection under 35 U.S.C.
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§ 103(a) pertaining to the appealed claims utilizing Nilsson1 or Nemoto2 as
prior art in base obviousness rejections that pertain, inter alia, to
independent claim 1 and a combination of Janmey3 in view of Gross4 in a
base obviousness rejection pertaining to independent claim 16 (Ans. 4-8 and
11-12). Additional prior art is applied by the Examiner in separate rejections
of certain dependent claims for allegedly teaching additional features set
forth in the so rejected dependent claims (id. at 8-20).5 In particular, the
Examiner applies the prior art in maintaining the several grounds of rejection
of the appealed claims under 35 U.S.C. § 103(a) as follows (Ans. 4-20)6:
Claims 1 and 7 as being unpatentable over Nilsson;
Claims 1 and 5-7 as being unpatentable over Nemoto;
Claim 2 as being unpatentable over Nemoto in view of Dansui7;
Claim 3 as being unpatentable over Nemoto in view of Knox-Holmes8
and Alford9;
Claim 4 as being unpatentable over Nemoto in view of Knox-Holmes,

1 WO 89/10011, published Oct. 19, 1989.
2 US 6,767,666 B2, issued July 27, 2004.
3 US 6,936,079 B2, issued Aug. 30, 2005.
4 US 4,329,407, issued May 11, 1982.
5 No new grounds of rejection have been identified by the Examiner (Ans. 3,
ll. 1-2; see generally Ans.).
6 The Application file record reflects that Appellant did not challenge
(petition) the Examiner’s separate presentation of the obviousness rejections
of dependent claims 21 and 27 in the Answer as being new grounds of
rejection. In this regard, the Examiner employed the same prior art in the
obviousness rejection of these dependent claims as relied upon in the non-
final Office action appealed from (NOA, pp. 13 and14).
7 US 6,692,864 B1, issued Feb. 17, 2004.
8 US 2005/0016904 A1, published Jan. 27, 2005.
9 US 2004/0020218 A1, published Feb. 05, 2004.
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Alford, and Dansui;
Claim 16 as being unpatentable over Janmey in view of Gross;
Claim 17 as being unpatentable over Janmey in view of Gross and
Dansui;
Claim 19 as being unpatentable over Janmey in view of Gross, Knox-
Holmes and Alford;
Claims 20 and 22 as being unpatentable over Janmey in view of Gross
and Knox-Holmes;
Claim 21 as being unpatentable over Janmey in view of Gross, Knox-
Holmes, and Tailor10;
Claims 23-26 as being unpatentable over Janmey in view of Gross and
Van Dyke11; and
Claim 27 as being unpatentable over Janmey in view of Gross and
Dansui.
We reverse the stated rejections.
At the outset, we observe that Appellant limits the arguments against
the Examiner’s prima facie obviousness position as to all of the rejected
appealed claims to arguments that oppose the Examiner’s bases for
determining that claims 1 and 16 would have been obvious as set forth in the
base rejections as they pertain to independent claims 1 and 16 (Br. 5-20). In
this regard, the Examiner relies on the additional prior art cited against
certain dependent claims for additional features set forth in the several
dependent claims, not for bolstering the Examiner’s obviousness position
laid out in the several base rejections as to the subject matter required by

10 US 4,472,468, issued Sept. 18, 1984.
11 US 4,684,589, issued Aug. 04, 1987.
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either of the independent claims (Ans. 8-20).
In particular, Appellant argues that there are shortcomings in the
Examiner’s prima facie bases for rejecting the independent claims for
reasons presented in the Appeal Brief under three specifically identified
issues, which contested issues are clearly set forth by Appellant as being
applicable to the Examiner’s alleged failure to carry the burden of
establishing a prima facie case of non-patentability (obviousness) for all of
the rejected appealed claims (Br. 5). 12
Accordingly, the arguments set forth by Appellant respecting the
rejection of the independent claims require our corresponding consideration
in determining the merits of the Examiner’s obviousness position with

12 Contrary to our dissenting colleague’s opinion, there is no ambiguity as to
the issues raised on appeal as they relate and apply to all of the rejected
appealed claims, including the separately rejected dependent claims. These
dependent claims are included in a list of contested rejected claims provided
at the beginning of the list of issues argued by Appellant under the caption
“F. GROUNDS OF REJECTION TO BE REVIEWED ON APPEAL”
(Br. 5). Thus, Appellant contests all of the rejected claims based on an
asserted failure of the Examiner to meet the burden to establish a prima facie
case of non-patentability sufficient to teach or suggest the base subject
matter found in independent claims 1 and/or 16 (Br. 5). Of course,
Appellant has waived, for purposes of this appeal, any arguments with
respect to the Examiner’s maintained rejections as they apply to the
dependent claims that were not made in the Appeal Brief, such as any
arguments asserting non-obviousness due to the additional features set forth
in the dependent claims. However, Appellant, per force, has not waived
arguments that are clearly expressed in the Appeal Brief as to the asserted
failure of the Examiner to present a prima facie case of obviousness as to all
of the rejected claims based on the Examiner’s expressly argued failure to
establish, prima facie, the obviousness of the subject matter of the
independent claims 1 and 16 (Br. 5-20).

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respect to all of the appealed dependent claims because these latter claims
include the subject matter of the claims from which they depend and are
argued on the basis of the contested features of the independent claims (id.).
After all, the separate obviousness rejections of the several dependent claims
are built upon the foundation of the Examiner’s obviousness position as to
the independent claims.
It follows that, on this appeal record, our resolution of the contested
base rejections as to the independent claims is dispositive of the Examiner’s
stated obviousness rejections pertaining to all of the rejected claims on
appeal (id. at 3 and 5-20).

Claims 1-7
Concerning the obviousness rejection of claim 1 over Nilsson, the
Examiner appears to have misconstrued the subject matter required by claim
1 and/or overstated the teachings of Nilsson. In this regard, claim 1 requires
a battery comprising, inter alia, an anode, a cathode, and a “thermal energy
transfer element” that includes a thermally conductive core, wherein the
transfer element is “distinct from the anode and cathode” (emphasis added)
and further wherein an electrolyte within a container of the battery is in
direct contact with the anode, the cathode, and at least a part of a first
portion of the thermally conductive core of the transfer element that is
located within the container.
In other words, claim 1, as properly construed, requires that the
transfer element is distinct from (arranged or located separate or disjoined
from) the anode and cathode for contact with the electrolyte such that its
core (first portion) is in direct contact with the electrolyte to provide a
Appeal 2011-009852
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separate thermal pathway. Claim 1 requires that the direct contact of the
electrolyte with a transfer element core first portion provides “a path for
conducting thermal energy between the electrolyte and the second portion”;
that is, a path in addition to and distinct from thermal transfer due to the
separate direct contact of the electrolyte with the anode and with the
cathode.
This interpretation is the broadest reasonable construction of claim 1
as regards the afore-discussed claim language when claim 1 is read as a
whole and as it would be understood by one of ordinary skill in the art when
read in light of the subject Specification. In this regard, the Specification
describes the thermal energy transfer element as being placed within the cell
of a battery, where it is in direct contact with and surrounded by the
electrolyte (Spec. ¶ 0006, see also id. ¶¶ 0007, 0008, 0021, and 0027). The
Specification explains that using thermal energy transfer elements that are
not proximate to or spaced apart from the anode and cathode has the
advantage of placing some or most of the electrolyte that is distant from the
container walls and the electrodes close to a thermal transfer element (id. at
¶¶ 0021, 0028 and 0029). This improves the transfer of energy to and from
the electrolyte in the cell (id.). Furthermore, every embodiment described in
the Specification has one or more thermal energy transfer elements that are
spaced apart from the anode and cathode of the battery (see id. at ¶¶ 0023,
0032-0039; Figs. 2-10).
We determine the term “distinct from” as used in claim 1 when claim
1 is read as a whole and given it its broadest reasonable construction in light
of the subject Specification requires that the thermal energy transfer element
is separate from or disengaged from the cathode and the anode in a manner
so as to furnish a distinct or separate thermal pathway that includes direct
Appeal 2011-009852
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contact with the electrolyte apart from or independent of the anode and
cathode structures and the electrolyte direct contacts with the anode and the
cathode structures. After all, during examination, “claims . . . are to be
given their broadest reasonable interpretation consistent with the
specification, and . . . claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art.”
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)).
Nilsson discloses an electrochemical battery such as a lead acid
battery (Nilsson 1-2). However, Nilsson’s battery includes heat transferring
bodies arranged along a plane of symmetry located within the battery’s
electrodes (id. at 5-6). An embodiment of the structure described in Nilsson
is shown in Figure 4B thereof. As shown in the figure, heat transferring
body 7 is the core of an electrode assembly. Heat transferring body 7 is
interleaved between and soldered to two electrode plates 13 (id. at 8). The
heat transferring body 7 is provided with a lug 9 that can be attached to a
collection strap 8 and post 10 (id. at Fig. 2). The post passes through the
battery’s lid and is provided with a cooling flange (id.).
Appellant argues that Nilsson does not disclose or suggest a “thermal
energy transfer element” that is distinct from “the anode and cathode” and
that the Examiner has not established that Nilsson provides an arrangement
wherein an electrolyte within the container is in direct contact with the heat
conducting body (Br. 8 and 9).
The Examiner responds to this contention by stating that
Nilsson explicitly recites the battery components labeled as
positive electrode, negative electrode and thermally conductive
core. In the disclosure (WO 89/10011), Nilsson clearly teaches
the functionality of positive electrode, negative electrode and
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Application 11/657,906
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thermally conductive core. Since the parts are clearly separately
labeled, have different structure and perform separate functions,
it would have been obvious to a person of ordinary skill in the
art at the time of invention that the parts are distinct.
(Ans. 20).
In addition, the Examiner conclusively asserts that the heat conducting
body of Nilsson would be expected to be in contact with the electrolyte
because the electrode of Nilsson is in direct contact with the electrolyte (id.
at 21).
Our review of this rebuttal argument indicates that the Examiner has
either applied an erroneous construction of the claim term “distinct from” or
has erroneously attributed unsupported teachings to Nilsson.
It is our judgment that, on this record, the Examiner has not carried
the burden to reasonably establish that heat transferring body 7 of Nilsson
discloses or suggests a thermal transfer element that is distinct (separate or
disjoined) from the anode and cathode, within the meaning required by
claim 1. In this regard, Figure 4A of Nilsson as referred to by the Examiner
shows that the heat conducting body/plate 7 is sandwiched or interleaved
between negative electrodes 13 and soldered thereto. Moreover, the
Examiner has not established that Nilsson’s battery arrangement includes
electrolyte within a container which electrolyte is in direct contact with a
part of a first portion of the heat transferring body within the container,
which electrolyte is also in direct contact with an anode and cathode, and
which latter structures and contacts are each distinct or separate from the
heat transferring body and its direct contact with the electrolyte, as required
by claim 1.
The Examiner has not otherwise established that Nilsson would have
suggested the subject matter embraced by claim 1.
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In light of the above, we reverse the Examiner’s obviousness rejection
of claim 1 and dependent claim 7 over Nilsson.
Concerning the Examiner’s obviousness rejection of claim 1 over
Nemoto, Appellant argues that the Examiner has not established that
Nemoto discloses or suggests a “thermal energy transfer element” that is
distinct from the anode and cathode, which element comprises “a first
portion located within the container and a second portion located external to
the container” as required by the claim’s language (Br. 9-15; Claim 1
(emphasis added)). In this regard, Nemoto describes a lithium secondary
cell that comprises an anode and a cathode that are wound or laminated
together with a separator sheet between them (Nemoto Abstract).
As shown in Figure 1 of Nemoto, the anode, cathode, and separator
(collectively 1; Fig. 4) are tightly wound around the outer wall of aluminum
core 13 (Nemoto col. 3, ll. 12-26; col. 5, ll. 32-34). The external terminals
16A and 16B of the cell are cooled by cooling means 28 (id. at col. 6, ll. 7-
21). Nemoto states: “In the case of the center axis direction of the cell, heat
produced inside this lithium secondary cell is dissipated from the surface of
the cell through the electric current path” (id. at col. 5, ll. 46-48). In other
words, Nemoto describes the heat being dissipated through the anode and
cathode.
The Examiner has not established that Nemoto teaches or suggests
that aluminum core 13 is attached to structure that extends outside the
battery container in a manner that can be used to dissipate heat and which
are parts of a thermal energy transfer element that is distinct from the anode
and cathode structures.
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Consequently, we reverse the Examiner’s rejection of claim 1 and
dependent claims 5-7 as obvious over Nemoto.
The Examiner does not rely on the teachings of the additionally
applied references employed in the separate rejections of dependent claims
2-4 to address the limitations incorporated into these claims by virtue of
their dependency on claim 1.
It follows that we reverse the Examiner’s separate obviousness
rejections of dependent claims 2-4, relying on Nemoto as the primary
reference, for the reasons argued by Appellant with respect to independent
claim 1.

Claims 16, 17, and 19-27
Turning to independent claim 16, the Examiner relies on the
combined teachings of Janmey and Gross in maintaining the stated
obviousness rejection employing Gross for allegedly teaching a thermal
energy transport element corresponding to that claimed, which, according to
the Examiner, would have been obvious for one of ordinary skill in the art to
employ in the battery of Janmey (Ans. 11-12).
In this regard, claim 16 requires that the first portion of the thermal
energy transfer element’s thermally conductive core meet three conditions:
(1) located in the cell container, (2) in direct contact with the electrolyte, and
(3) surrounded by the electrolyte (Claim 16).
Appellant argues that the Examiner has not established that the heat
exchangers of Gross satisfy the three above-identified limitations required
for the claimed thermal energy transport element (Br. 19).
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In response to Appellant’s arguments, the Examiner maintains that
Gross’s “heat transfer elements as shown in Figures 1, 2, 3, 4, 5 and 6 are
direct in contact with the electrolyte and the battery element” (Ans. 26).
As the description of Figure 1 makes clear, however, Gross does not
describe heat exchanger 20 as having any portion that is located within the
container of cell 12. Instead, each cell 12 has a portion of a heat exchanger
that is associated with the cell and is located in interspace 14 (Gross col. 6, l.
62-col. 7, l. 9 (discussing Figure 3)). The heat exchanger functions to
thermally connect the zone of interspace 14 to outside atmosphere 36 (id.).
The Examiner erred in finding that Gross describes a thermal energy
transfer element that includes a first portion that is inside the cell container,
in direct contact with the cell’s electrolyte, and surrounded by the
electrolyte.
It follows that we reverse the Examiner’s rejection of claim 16 under
35 U.S.C. § 103(a) as being unpatentable over Janmey in view of Gross.
The Examiner does not rely on the teachings of the additionally
applied references employed in the separate obviousness rejections of
dependent claims 17, and 19-27 to cure the deficiencies in the base rejection
of independent claim 16.
As a consequence, we also reverse the Examiner’s separate
obviousness rejections of dependent claims 17, and 19-27 that rely on a
combination of Janmey and Gross to teach or suggest the incorporated
features of independent claim 16 for the reasons argued by Appellant with
respect to claim16.
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ORDER
The Examiner’s decision to reject the appealed claims 1-7, 16, 17, and
19-27 under 35 U.S.C. § 103(a) is reversed.
REVERSED

bar

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Application 11/657,906
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BEST, Administrative Patent Judge, Dissenting-in-Part.
I agree with my colleagues that the Examiner erred in rejecting claims
1 and 16 of the ’906 application. I therefore join those portions of the
opinion reversing the Examiner’s rejections of those claims. But I disagree
with the panel majority’s decision to reverse the rejections of the dependent
claims. The majority finds that Appellant has presented every ground of
rejection set forth in the June 23, 2010 Office Action to us for our review
and has argued that the Examiner has failed to establish a prima facie case
that each of the dependent claims is unpatentable (Maj. Op. 5-6). The
majority’s findings apparently are based on a single, conclusory sentence in
Appellant’s statement of the grounds of rejection presented for review (id.).
In reaching this conclusion, the panel majority allows Appellant to ignore
our rules regarding the content and organization of briefs and infers what
Appellant’s unstated argument must have been. I respectfully dissent from
these holdings.
At the time that the Appeal Brief was filed, our rules required
Appellant to provide “[a] concise statement of each ground of rejection
presented for review.” 37 C.F.R. § 41.37(c)(1)(vi) (2010) (emphasis added).
Appellant also was required to present “[t]he contentions of appellant with
respect to each ground of rejection presented for review in paragraph
(c)(1)(vi) of this section, and the basis therefor, with citations of the statutes,
regulations, authorities, and parts of the record relied on. . . . Each ground of
rejection must be treated under a separate heading.” 37 C.F.R.
§ 41.37(c)(1)(vii) (2010) (emphasis added).
The Federal Circuit has explained that a ground of rejection “is not
merely the statutory requirement for patentability that a claim fails to meet
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but also the precise reason why the claim fails that requirement.” Hyatt v.
Dudas, 551 F.3d 1307, 1312 (Fed. Cir. 2008) (discussing predecessor to 37
C.F.R. § 41.37(c)(1)(vii)). Thus, when claims are rejected under § 103(a) as
obvious over different combinations of references, they are subject to
different grounds of rejection. Id. (discussing In re McDaniel, 293 F.3d
1379, 1384-85 (Fed. Cir. 2002)).
Here, the Examiner properly identified each separate ground of
rejection. In all, the Examiner asserted ten different grounds of rejection
against the ’906 application’s claims (e.g., Office Action 4, 5, 6 (June 23,
2010)).1
Appellant’s Brief, however, only identifies parts of three of these
grounds of rejection as being presented for review. The relevant section of
Appellant’s Brief is reproduced below, in its entirety:
F. GROUNDS OF REJECTION TO BE REVIEWED
ON APPEAL
The issues in this appeal relate to whether the Examiner
has met his burden of establishing a prima facie case sufficient
to establish that Appellant’s Claims 1-7, 16-17, and 19-27 are
unpatentable, specifically:
1. Whether the Examiner has met his burden to show
that Claim 1 is obvious over Nilsson?
2. Whether the Examiner has met his burden to show
that Claim 1 is obvious over Nemoto?

1 The panel opinion reproduces the 12 grounds of rejection set forth in the
Examiner’s Answer (Maj. Op. 4-5). The difference in number is due to the
Examiner’s entry of two new grounds of rejection in the Answer. For the
purposes of this dissent, the differences between the two sets of grounds for
rejection are not material.
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3. Whether the Examiner has met his burden to show
that Claim 16 is obvious over Janmey in view of Gross?
(App. Br. 5 (emphasis in original)).
As can be seen, Appellant’s Brief does not contain any indication that
Appellant wants to appeal the Examiner’s stated grounds of rejection for
claims 2-4, 17, and 19-24 (compare Ans. 8, 9, 10, 12, 13, 15, 16, 17, 18 with
App. Br. 5). Furthermore, Appellant’s Brief omits claims 5-7 from the
descriptions of grounds of rejection specifically identified as being appealed
with respect to claim 1 (compare Ans. 4 and 6 with App. Br. 5).2
The Argument section of Appellant’s brief likewise is silent as to the
grounds of rejection asserted against claims 2-4, 17, and 19-24. It also does
not mention claims 5-7 in its discussion of the grounds of rejection asserted
against claim 1. Indeed, only claims 1 and 16 are mentioned at all in
Appellant’s Argument section. Furthermore, the only relief Appellant
expressly requests is that claims 1 and 16 “be held allowable and that Notice
of Allowance be issued” (App. Br. 9, 15, 20). In sum, Appellant’s argument
section only includes Appellant’s contentions regarding the independent
claims and the three grounds of rejection identified in accordance with 37
C.F.R. § 41.37(c)(1)(iv).
Appellant, therefore, failed even to present for review any ground of
rejection of the dependent claims and failed to provide any argument,
reason, or authority explaining why the unpresented grounds of rejection

2 I further note that the Status of Claims section of Appellant’s brief only
discusses the Examiner’s rejections of claims 1 and 16. Although such
discussion is not required, see 37 C.F.R. § 41.37(c)(1)(iii) (2010), it further
suggests that Appellant’s appeal is only focused upon the independent
claims.
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should be reversed. In view of these manifest failures, I would affirm the
Examiner’s rejections of claims 2-7, 17, and 19-24.
Rather than simply applying our rules, the panel majority improperly
infers what it thinks Appellant’s unstated arguments would have been. In
particular, the panel majority states that Appellant has (1) identified the
“contested issues” raised on appeal and (2) clearly stated that these contested
issues are applicable to the Examiner’s alleged failure to carry the burden of
establishing a prima facie case of non-patentability (obviousness) for all of
the rejected appealed claims (Maj. Op. 5-6 (citing Br. 5)). The panel
majority then states that “[Appellant’s] arguments . . . respecting the
rejection of the independent claims require our corresponding consideration
in determining the merits of the Examiner’s obviousness position with
respect to all of the appealed dependent claims” (Maj. Op. 6-7 (citing App.
Br. 5) (emphasis added)). I cannot join these findings for several reasons.
First, our rules require the appellant to state each ground of rejection
presented for review. Thus, our rules are unlike the Federal Rules of
Appellate Procedure, which merely require identification of the issues
presented for review. Compare 37 C.F.R. § 41.37(c)(1)(vi) with Fed. R.
App. P. 28(a)(5). By requiring an appellant to state the grounds of rejection
presented for review, our rules impose a higher burden than that imposed by
the Courts of Appeal. There can be no argument that Appellant failed to
meet this burden and therefore failed to present seven grounds of rejection to
us for our review. We should not excuse Appellant’s failure to comply with
37 C.F.R. §§ 41.37(c)(1)(vi) and 41.37(c)(1)(vii).
Our rules impose this higher burden to prevent ambiguity as to the
claims and grounds of rejection that are the subject of the appeal. Clarity
regarding the precise subject of an appeal is important for at least two
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reasons. First, the Board needs to know the precise subject of the appeal so
that we are not left guessing what Appellant intended to argue or upon which
facts Appellant relies. Second, the Examiner needs to know which grounds
of rejection must be addressed in the Examiner’s Answer. In this case, the
Examiner had no notice that the rejections of the dependent claims were
even going to be reviewed, let alone Appellant’s arguments for reversing the
Examiner’s rejections. Examiners should not be required to try to anticipate
what a panel may decide to argue on behalf of an Appellant who files a brief
that does not expressly argue for reversal of a particular ground of rejection.
Second, the majority is assuming that Appellant correctly identified
the claims on appeal and erred by failing to provide any argument in support
of reversing the unpresented grounds of rejection. It also might be that
Appellant decided not to include any argument regarding the dependent
claims and erred by identifying them being the subject of appeal. Once
again, the majority is attempting to read Appellant’s mind. This is a road we
should not begin to go down.
Third, I cannot join the majority’s conclusion that we are required to
reverse the unpresented grounds of rejection. We are not required to hunt
through the record on appeal seeking facts that support an appellant’s
position, cf. Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1351 (Fed.
Cir. 2000) (refusing to search record to discover evidence in support of
appellant’s arguments). Neither are we required to infer an appellant’s
intended arguments from an inadequate brief. “Judges are not like pigs,
hunting for truffles buried in the briefs.” U.S. v. Dunkel, 927 F.2d 955, 956
(7th Cir. 1991). It is Appellant’s responsibility to provide the Board with
argument, facts, and reasoning sufficient to justify reversing the Examiner.
Cf. OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc., 701 F.3d 698, 707
Appeal 2011-009852
Application 11/657,906
6
(Fed. Cir. 2012). The requirement that appellant provide sufficient reasoning
applies with equal force to issues of law and issues of fact. See Nazomi
Commc’ns, Inc. v. Arm Holdings, PLC, 403 F.3d 1364, 1371 (Fed. Cir.
2005). Where, as here, an appellant fails to present any argument with
respect to a particular ground of rejection, we are not required to—and we
should not, as a prudential matter—conduct such an analysis in the first
instance. In this case, the majority’s guess as to what Appellant intended to
argue regarding the unpresented grounds of rejection very likely is correct.
Other cases will not be so easy.
In view of Appellant’s manifest failure to present and to argue for
reversal of Examiner’s grounds of rejection of the dependent claims, I would
hold that Appellant had waived any arguments for reversal of the dependent
claims. See Hyatt, 551 F.3d at 1314 (holding that the Board may find waiver
when an appellant fails to contest a ground of rejection). Accordingly, I
would summarily affirm the Examiner’s rejections of claims 2-7, 17, and 19-
24.