Ex Parte Kim et al

Board of Patent Appeals and Interferences

Dec 30, 2009

10990576 (B.P.A.I. Dec. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHOONG-SIK KIM, SEONG-WOON BOOH,
DONG-WOO LEE, and JIN-WOO CHO
____________

Appeal 2008-5069
Application 10/990,576
Technology Center 2600
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Decided: December 30, 2009
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Before JAMES T. MOORE and ALLEN R. MACDONALD, Vice Chief
Administrative Patent Judges, and MAHSHID D. SAADAT, MARC S.
HOFF, and KARL D. EASTHOM, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants requests rehearing of our decision entered June 22, 2009
(“Decision”), in which we affirmed the rejection of claims 1-10 under
35 U.S.C. § 103(a).
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Application 10/990,576

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We have carefully considered the arguments presented by Appellants
in the Request and reviewed our decision. However, those arguments do not
persuade us that our decision was in error in any respect or we have
overlooked any relevant points in reaching our decision. More specifically,
we did not overlook any points presented by Appellants for the first time in
the Reply Brief because, as will be discussed below, arguments that could
have been presented in the Principal Brief on Appeal, but were not, may not
be presented in the Reply Brief in the absence of a showing of good cause.
The Examiner’s statement of rejection in the Answer appears to be
substantially the same as, if not identical to, the statement of the rejection in
the Final Rejection. Moreover, the Examiner did not make any additional
findings of fact regarding the references in the Response to Argument
section of the Answer.
Appellants, however, raised new arguments against the rejection in
the Reply Brief1 without explaining what “good cause” existed to consider
the new arguments. In the Request, Appellants do not challenge our finding
that these arguments were presented for the first time in the Reply Brief, but
instead assert that the regulations set out in 37 C.F.R. § 41, Practice Before
the Board of Patent Appeals and Interferences, require the Board to consider
such belated arguments (Request 2-3).

ANALYSIS

1 See e.g., Reply Br. 7-9 (filed Jan. 28, 2008). The Reply Brief, for the first
time, challenges the rejection by arguing the teachings of Hull, motivation
for combining Van Rens and Hull, teaching the full scope of the claimed
terms, compatibility of the applied references, destroying the function of
Van Rens if combined with Hull, and use of hindsight.
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Appellants argue that the holding of Optivus Technology, Inc. v. Ion
Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006), interpreting the
Federal Rules of Civil Procedure, is misapplied to the practice before the
Board (Request 2). Although the procedural rules governing appeals before
the Board are separate and distinct from the procedural rules of an Article III
Court of Appeals, the explanation by our reviewing court of the function of a
reply brief is instructive:
This court has stated that under Fed. R. App. P. 28(c)2 a
reply brief should “reply to the brief of the appellee” and “is not
the appropriate place to raise, for the first time, an issue for
appellate review.” Amhil Enterprises Ltd. v. Wawa, Inc.,
81 F.3d 1554, 1563 (Fed. Cir. 1996); see also Regents of the
Univ. of California v. Eli Lilly & Co., 119 F.3d 1559, 1565-66
(Fed. Cir. 1997). . . .
There are cogent reasons for not permitting an appellant
to raise issues or arguments in a reply brief. Among them are
the unfairness to the appellee who does not have an opportunity
to respond and the added burden on the court that a contrary
practice would entail. As the Tenth Circuit put it, permitting an
appellant to raise new arguments in a reply brief “would be
unfair to the court itself, which without the benefit of a
response from appellee to an appellant's late-blooming
argument, would run the risk ‘of an improvident or ill-advised
opinion, given [the court's] dependence . . . on the adversarial
process for sharpening the issues for decision.’” Headrick [v.
Rockwell Int'l Corp.,] 24 F.3d [1272,] 1278 (10th Cir. 1994)]
(quoting Herbert v. Nat'l Academy of Sciences, 974 F.2d 192,
196 (D.C. Cir. 1992)).
Carbino v. West, 168 F.3d 32, 34-35 (Fed. Cir. 1999).

2 Fed. R. App. P. 28(c) reads in relevant part, “[t]he appellant may file a
brief in reply to the appellee’s brief.”
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Therefore, when similar considerations of case management are
applied to the rules governing conduct of appeals to the Board, the treatment
of replies in appeals to the Board is consistent with the role of replies in
appeals generally. A Reply Brief filed before the Board is in reply to an
Examiner’s Answer. 37 C.F.R. § 41.41(a)(1). Similar to the replies filed
before the Federal Circuit, a Reply Brief to the Board is not an opportunity
to interject new arguments, because the Board has no way of knowing how
such new arguments would be addressed by the Examiner. There are other
remedies available to Appellants for entering those new arguments by going
back before the Examiner, which are neither unfair to Appellants nor violate
the principle of compact prosecution.
Appellants further assert that neither 37 C.F.R. § 41.41(a)(1) nor
§ 41.41(a)(2) prohibits an appellant from including new arguments in a reply
brief, because all that is specifically excluded is the inclusion of new
amendments, affidavits or other evidence (Request 2). Appellants conclude
that new arguments in a reply brief must be considered because they are not
specifically excluded (id.). Similarly, Appellants refer to 37 C.F.R.
§ 41.37(c)(1)(vii), stating “Any arguments not included in the brief or a
reply brief … will be refused consideration by the Board” (emphasis
added), and to 37 C.F.R. § 41.52 Rehearing (a)(1), stating that “arguments
not raised in the briefs before the Board and evidence …are not permitted
in the request for rehearing” (emphasis added) (Request 2-3). Appellants
argue that the use of “brief or reply brief” in alternative and referring to
“briefs” in plural in these sections of the Rules require the Board to consider
all of the arguments presented by Appellants in both the Brief and the Reply
Brief (Request 3).
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The purpose of the principal brief on appeal is to show that the
Examiner erred in rejecting the claims, while the purpose of a reply brief is
to provide Appellants the opportunity to address any new grounds of
rejection the Examiner may have raised in the answer, or to address changes
or developments in the law that may have occurred after the principal brief
was filed. The reply brief is not intended as an opportunity to make
arguments that could have been made during prosecution, but were not.
Neither is the reply brief an opportunity to make arguments that could have
been made in the principal brief on appeal to rebut the Examiner’s
rejections, but were not. In fact, the reference in 37 C.F.R. § 41.37(c)(1)(vii)
to the “reply brief filed pursuant to § 41.41” does not create a right for
Appellants to raise an argument in the reply brief that could have been raised
in the principal brief but was not. Rather, that reference merely puts
Appellants on notice that arguments that could be made in the reply brief,
but are not, are waived.
We are mindful that current Board rule 41.41 (i.e., 37 C.F.R. § 41.41),
governing the content of reply briefs, which was in effect when the Reply
Brief was filed (January 28, 2008), does not explicitly prohibit reply brief
arguments that are not responsive to new points in the answer. In this
respect, Bd. R. 41.41 is similar to its immediate predecessor rule, 37 C.F.R.
§ 1.193(b) (2004), which was amended effective December 1, 1997, to
remove the requirement that “a reply brief [be] directed only to such new
points of argument as may be raised in the examiner's answer.” 37 C.F.R. §
1.193 (b) (1997). However, we believe it is clear from the commentary to
the corresponding notice of final rulemaking that this requirement was
dropped from § 1.193 (b) for the sole purpose of eliminating delays caused
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by petitions from examiners’ refusals to enter reply briefs that contained one
or more arguments not directed to new points in the answer. See Changes to
Patent Practice and Procedure; Final Rule, 62 Fed. Reg. 53,132, 53,168
(Oct. 10, 1997), reprinted in 1203 Off. Gaz. Pat. & Trademark Office 63, 95
(Oct. 21, 1997). Although that commentary explains that a reply brief may
not be refused entry by an examiner on the ground that it contains an
argument not directed to a new point in the answer, nothing in that
commentary suggests that the Board is required to consider reply brief
arguments that are not directed to new points in the answer.
Consistently, Bd. R. 47, “Oral Hearing,” provides in paragraph (e)(1)
that “appellant may only rely on evidence that has been previously entered
and considered by the primary examiner and present argument that has been
relied upon in the brief or reply brief except as permitted by paragraph (e)(2)
of this section.” 37 C.F.R. § 41.47(e)(1) (2007) (emphasis added).
Paragraph (e)(2) provides that, “[u]pon a showing of good cause, appellant
and/or the primary examiner may rely on a new argument based upon a
recent relevant decision of either the Board or a Federal Court.” There is no
provision for arguments at oral hearing that could have been made earlier,
but were not.
The automatic consideration of such belated arguments would also
stand in stark contradiction to the general policy set out in Board
Rule 41.1(b), which reads: “Construction. The provisions of Part 41 shall be
construed to secure the just, speedy, and inexpensive resolution of every
proceeding before the Board.” 37 C.F.R. § 41.1(b) (2007). Rather than
reviewing a record for error, the Board would be considering, in the first
instance, findings of fact proposed by Appellants, but not weighed by the
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Application 10/990,576

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Examiner against the other evidence of record. Dealing with the new facts
would tend to require still further fact finding, potentially resulting in delay,
rather than resolution of the case. As outlined in our analysis supra, this
treatment of replies in appeals to the Board is consistent with the role of
replies in appeals generally. See Carbino, 168 F.3d at 34-35 (Fed. Cir.
1999).
In any event, Appellants may avail themselves of a full and fair
opportunity to raise additional issues and provide additional evidence by
way of refiling the application under an appropriate provision of
37 C.F.R. § 1.53, or by seeking continued prosecution under § 1.114. It is in
no way unfair to require applicants for patents, including Appellants to the
Board, to present their best arguments in a timely fashion. Belated
arguments, if addressed, impose costs on the Agency (specifically on the
Examiner, the Technology Center Directors, and the Board), which in turn
impose costs on the public (most directly, on other applicants and appellants,
who must wait longer for consideration of their applications and appeals;
and indirectly, on the general public, which must wait longer for the benefits
provided by a healthy and vigorous patent system). Properly interpreted, the
Rules do not require the Board to take up a belated argument that has not
been addressed by the Examiner, absent a showing of good cause.

CONCLUSION
Therefore, we are adhering to our decision not to address the merits of
new arguments in the Reply Brief that are not responsive to new points in
the Answer. Accordingly, we decline to modify our Decision.

Appeal 2008-5069
Application 10/990,576

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ORDER
The request for rehearing is denied.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REHEARING DENIED

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