Ex Parte Letts

Board of Patent Appeals and Interferences

Jan 31, 2008

10640895 (B.P.A.I. Jan. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN B. LETTS
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Appeal 2007-1392
Application 10/640,895
Technology Center 1700
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Decided: January 31, 2008
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Before MICHAEL R. FLEMING, Chief Administrative Patent Judge, and
FRED E. McKELVEY, Senior Administrative Patent Judge, and
PETER F. KRATZ, JEFFREY T. SMITH, LINDA M. GAUDETTE,
ALLEN R. MacDONALD, and LINDA E. HORNER, Administrative Patent
Judges.

FLEMING, Chief Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
The appeal is before an expanded panel to consider a request for
rehearing under 37 C.F.R. § 41.52(a)(1) of a Decision on Appeal entered by
a merits panel on June 27, 2007, affirming a rejection of appealed claims 1,
3-7, and 9-16.
Appeal 2007-1392
Application 10/640,895

We DISMISS the appeal as to independent claim 7 and the claims
dependent thereon. We also REMAND the appeal to the merits panel for
consideration and decision on the patentability on the merits of independent
claims 1 and 15 and the claims dependent thereon.
The invention described in Appellant's Specification relates to
polyisocyanurate insulation foams made by reacting an isocyanate and
reactants which include a polyol. (Spec.2:6-10). Reaction of an isocyanate
and a polyol can lead to production of polyurethane. However, when excess
isocyanate is present and a trimerization catalyst is used, a polyisocyanurate
(as opposed to polyurethane) is obtained. (Spec. 4:10-12 and 7:11-16).
Appellant’s claimed invention is limited to a method for producing
polyisocyanurate insulation foams, as opposed to polyurethane insulation
foams.
In its Decision, the merits panel affirmed the rejection of independent
claim 7, the broadest claim on appeal. Since Appellant did not present under
specific subheadings [37 C.F.R. § 41.37(c)(1)(vii)] specific arguments for
any other claims, the merits panel applied that result to all of the appealed
claims. (Dec. 5, n. 5).
In the Request for Rehearing, Appellant contends that the Examiner
and the merits panel were, or should have been, aware that Appellant
inadvertently failed to cancel claim 7. (Req. for Reh. 2). Also, Appellant
contends that the issues posed by the limitations in claims 1 and 15 that are
not included in claim 7 were fully briefed in the Appeal Brief, Examiner’s
Answer and Reply Brief. (Id. at 2). Thus, Appellant argues, in the interest
of judicial economy, the Board should rehear and decide the appeal in
respect to claims 1 and 15. (Id. at 3).
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ISSUE
A first issue is whether the Board should dismiss the appeal as to
claim 7.
A second issue is whether the Board should rehear the appeal and
decide patentability on the merits of claims 1 and 15 and the claims
dependent thereon despite the Appellant's failure, in this case, to comply
with the applicable rule.
FINDINGS OF FACT
1. Independent claim 7 recites:
A method for producing polyisocyanurate insulation foams, the
method comprising:

contacting an isocyanate-reactive compound with an isocyanate
compound in the presence of a blowing agent that includes both
isopentane and n-pentane in the substantial absence of
cyclopentane, where the isopentane is present in a weight
fraction that is greater than the weight fraction of the n-pentane.
2. Independent claim 1 recites:
A method for producing polyisocyanurate insulation foams, the
method comprising:

contacting an A-side stream of reactants that includes an
isocyanate with a B-side stream of reactants that include a
polyol and a blowing agent, where the blowing agent includes
isopentane and n-pentane in a substantial absence of
cyclopentane, where said polyol and said blowing agent are
combined under a pressure in excess of about 80 psi and a
temperature in an excess of about 10°C, and where the blowing
agent includes an isopentane to n-pentane weight ratio of 2.7:1
to 1:1.
(emphasis added).
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3. Independent claim 15 recites:
A method for producing polyisocyanurate insulation foams, the
method comprising:

contacting an A-side stream of reactants that includes an
isocyanate with a B-side stream of reactants that include a
polyol and a blowing agent, where the blowing agent includes
isopentane and n-pentane in a substantial absence of
cyclopentane, where the weight ratio of the isopentane to n-
pentane if [sic] from 2.7:1 to 1:1, and where said polyol and
said blowing agent are combined under a pressure in excess of
about 80 psi and a temperature in an excess of about 10°C.
(emphasis added).

4. As indicated, claims 1 and 15 include limitations relating to pressure and
temperature that are not included in claim 7.
5. In the Appeal Brief, filed May 19, 2006, Appellant stated:
Claims 1, 3-7, and 9-16 are pending, all stand rejected under 35
U.S.C. § 103, and all are appealed. . . . Inasmuch as Appellant
had inadvertently failed to amend claim 7 in a manner
consistent with claims 1 and 15, Appellant offers to cancel
claim 7, as well as the claims dependent thereon, upon
favorable consideration of claims 1 and 15.

(App. Br. 2).
6. Appellant has never formally withdrawn independent claim 7 and the
claims dependent thereon by canceling those claims.
7. In the Appeal Brief, Appellant did not argue the patentability of any of
the claims separately but did argue that pressure and temperature limitations
distinguish the claimed invention over the prior art. (App. Br. 6-8).
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8. In the Examiner’s Answer, entered August 8, 2006, the Examiner
addressed the issue of the patentability of claims containing pressure and
temperature limitations. (Ex. Ans. passim).
9. In the Reply Brief, filed October 10, 2006, Appellant repeated verbatim
the statement made in the Appeal Brief as quoted above (Finding of Fact
(“FF”) 5) concerning the inadvertent failure to amend claim 7, and offer to
cancel 7 and the claims dependent thereon. (Reply Br. 4).
10. In the Reply Brief, on the merits, Appellant contended that the
Examiner’s combination of a secondary reference that discloses specific
process parameters, i.e., pressure and temperature limitations, with the
primary references that do not disclose such parameters is improper. (Reply
Br. 9-10).
11. In the Reply Brief, Appellant further stated that “[I]t should have been
clear to the Examiner that Appellant’s arguments [in the Appeal Brief] were
directed toward claims 1 and 15.” (Reply Br. 12).
12. At the Oral Hearing, held June 6, 2007, Appellant’s counsel reiterated
that “I did, in the brief, say that we would cancel that claim [7], as long as
we address the other issues.” (Hearing Transcript 17).
13. In the Decision on Appeal, entered June 27, 2007, the merits panel
observed that “Appellant’s offer to cancel claim 7 and the claims dependent
thereon did not remove these claims from appeal.” (Dec. 5, n. 4).
14. In the Decision on Appeal, the merits panel also stated that:
[W]e note that Appellant argues the conditions under
which the blowing agent is formed. However, this
limitation does not occur in claim 7. Therefore, a
discussion of the conditions for formation of the
blowing agent is not necessary to our decision.
(Dec. 5, n. 5).
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15. Similarly, in the Decision on Appeal, the panel further noted that:
Appellant argues the [pressure and temperature]
conditions under which the polyol and blowing
agent preblend is created . . . However, Appellant’s
arguments regarding the conditions for formation
of the polyol and blowing agent preblend are not
limited to the scope of claim 7.
(Dec. 8).
16. In the Request for Rehearing, filed August 27, 2007, Appellant
acknowledged that:
[B]ecause the pertinent limitations of claims 1 and
15 were not considered [in the Decision on Appeal],
the entirety of the Appellant’s arguments were not
considered because all arguments hinged on the
relevant limitations within claims 1 and 15 (not claim 7).
Indeed, Appellant fully briefed – in both the initial
Brief and Reply Brief – the issues relating to the
relevance of these particular claim limitations.
(Req. for Reh’g. 2)(emphasis added).

APPLICABLE REGULATIONS
In respect to the cancellation of claims during an appeal, 37 C.F.R.
§ 41.33(b)(1) provides:
Amendments filed on or after the date of filing a brief
pursuant to § 41.37 may be admitted:
(1) To cancel claims, where such cancellation does
not affect the scope of any other pending claim in
the proceeding . . .
37 C.F.R. § 41.37(c) requires that in order to present a particular claim
for individual consideration on appeal, the appellant must submit a separate
argument under a separate subheading as to that claim. Specifically,
37 C.F.R. § 41.37(c)(1)(vii) states:
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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.
Requests for rehearing are controlled by 41 C.F.R. § 41.52(a)(1),
including the requirement that:
The request for rehearing must state with particularity the
points believed to have been misapprehended or overlooked
by the Board.

RELEVANT JUDICIAL AUTHORITY
In a case of first impression involving a possible misunderstanding of
a procedural issue, the Federal Circuit, in Key Pharmaceuticals v. Hercon
Labs. Corp., 161 F.3d 709, 715-16 (Fed. Cir. 1998) observed:
It is the case, though, that we have not found any prior opinion
of this court that has had occasion to publicly condemn this
behavior [of asserting a position which the trial court adopts at
the request of appellant and then complaining about it on
appeal]. . . In an abundance of fairness, then, and to preclude
any argument by Hercon that it was not on notice, we choose
instead to independently review the correctness of the trial
court’s claim construction.

(footnote omitted). See also Hockerson-Halberstadt, Inc. v. Converse Inc.,
183 F.3d 1369, 1374 (Fed. Cir. 1999).

ANALYSIS
Status of Claim 7
In the Appeal Brief and Reply Brief, “Appellant offer[ed] to cancel
claim 7, as well as the claims dependent thereon, upon favorable
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consideration of claims 1 and 15.” (FF 5, 9). Facially, all Appellant offered
was to cancel claim 7 and the claims dependent thereon conditioned upon
“favorable consideration of claims 1 and 15.” Appellant did not cancel
claim 7 and claims dependent thereon.
At the Oral Hearing, Appellant appeared to moderate this position,
stating “I did, in the brief, say that we would cancel that claim [7], as long as
we address the other issues.” (FF 12). Nevertheless, the offer remained
conditional on “address[ing] the other issues.”
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. (See Dawson v.
Dallavalle, Interference 105,223),
http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd105569-09-
18-2007-1, p. 4-5 (BPAI Sep. 18, 2007) (concession of priority in
interference cannot be conditioned on limitation on future action by
USPTO). 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. (See
37 C.F.R. § 41.33(b)(1)).
In the present appeal, the merits panel was under no obligation to
dismiss the appeal as to claim 7, which remained pending in the application
despite Appellant’s contingent offer in the Appeal Brief and Reply Brief,
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and at the Oral Hearing to cancel the claim conditioned upon favorable
consideration of claims 1 and 15. Even as late as filing the Appeal Brief,
Appellant could have submitted an amendment as permitted by 37 C.F.R.
§ 41.33(b)(1) canceling claim 7 and the claims dependent thereon.
Furthermore, Appellant did not request a withdrawal or dismissal of claim 7
and the dependent claims.
Appellant’s Request for Rehearing does not dispute that the Examiner
did not err in rejecting claim 7 and the claims dependent thereon. The
Decision on Appeal affirmed the Examiner’s rejection of claim 7 on the
merits. Furthermore, the Request for Rehearing does not argue that the
merits panel “misapprehended or overlooked” any points in connection with
its affirmance of the rejection of claim 7. (See 37 C.F.R. § 41.52(a)(1)).
Thus, the appeal is finally decided as to claim 7 and the claims dependent
thereon.

Consideration of Claims 1 and 15
In view of the finality of the appeal as to claim 7, the only procedural
issue remaining to be resolved is whether the Board should consider and
decide separately the patentability of claims 1 and 15.
As we have discussed above, Appellant did not file an amendment to
cancel claim 7 and the dependent claims nor did the Appellant request a
withdrawal or dismissal of claim 7 and the dependent claims. Further, as
noted, Appellant did not separately specifically argue any claim and the
panel thus correctly selected claim 7, the broadest claim, for deciding the
appeal. (See, 37 C.F.R. § 41.37(c)(1)(vii)).
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However, notwithstanding the technical correctness of the procedure
followed by the merits panel, it was at all times during the appeal known by
all of the participants, including the Examiner and the merits panel, that
Appellant was not arguing the patentability of claim 7 but was including it in
the group of appealed claims and relying on the pressure and temperature
limitations of claims 1 and 15 to establish the patentability of those claims.
(FF 7, 8, 10, 11, 14, 15, and 16). Most significantly, both Appellant and the
Examiner fully briefed the patentability of claims containing those
limitations. (FF 7, 8, and 10).
Therefore, lacking informative Board precedent and out of an
abundance of fairness, the appeal will be remanded to the merits panel for
considering and deciding, in the first instance, the patentability of claims 1
and 15 and the claims dependent thereon, as requested in the Request for
Rehearing. In reaching this result, the Board exercises its discretion by
electing to follow the practice followed by the Federal Circuit in Key
Pharmaceuticals, 161 F.3d at 715-16. In a previous situation also involving
a possible misunderstanding of procedural matter, the Board elected to
follow the abundance of fairness policy announced by the Federal Circuit.
(See Quadrant Drug Delivery Ltd. v. Nektar Therapeutics, 76 USPQ2d
1518, 1523 (BPAI 2005) (In an interference, permission granted to take
testimony outside the United States)).
As discussed above, the dismissal of the appeal as to claim 7 and the
claims dependent thereon is not conditioned on the consideration, favorable
or otherwise, of claims 1 and 15. Rather, such dismissal is the result of the
Appellant making it abundantly clear that he no longer seeks a patent on
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claim 7 and claims dependent thereon. In essence, the appeal is moot as to
claim 7 and the claims dependent thereon.
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.

DECISION
The appeal is (1) dismissed as to claim 7 and the claims dependent
thereon, and (2) remanded to the merits panel for consideration and decision
on the patentability on the merits of claims 1 and 15 and the claims
dependent thereon and for such further action as the merits panel may deem
appropriate.

DISMISSED-IN-PART and REMANDED-IN PART
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Arthur M. Reginelli
Renner, Kenner, Grieve, Bobak, Taylor & Weber
Fourth Floor, First National Tower
Akron, OH 44308-1456

Tel.: (330) 376-1242

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