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Board Does Not Have “Carte Blanche” in Selecting Representative Claims for Review

01-1307
June 19, 2002

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Last Month at the Federal Circuit - July 2002

Judges: Linn (author), Mayer, and Prost

In In re McDaniel, No. 01-1307 (Fed. Cir. June 19, 2002), the Federal Circuit affirmed-in-part, vacated-inpart, and remanded a decision of the Board rejecting claims 53-64 of C. Steven McDaniel’s U.S. App. No. 08/252,384 (“the ‘384 application”). The Court held that 37 C.F.R. § 1.192(c)(7) does not permit the Board to select a single claim as representative of a group of claims not subject to a common ground of rejection, even if the applicant states that all the claims are of a single group.

The ‘384 application relates to an organophosphorus detoxifying (“opd”) gene and a recombinant organophosphorus acid anhydrase (“OPA”) enzyme derived from that gene. This gene and enzyme are said to be useful in detoxifying organophosphorus compounds, which are commonly found in pesticides and in chemical warfare agents such as nerve gases.

Claims 53-64 of the ’384 application were finally rejected and an appeal was filed based on the following grounds. Claims 53-54 and 58-63 were rejected under 35 U.S.C. § 102(a), or alternatively under 35 U.S.C. § 103, over “the McDaniel (BY) reference” or over “the Harper reference.” Claims 53, 58, and 60 were rejected under 35 U.S.C. § 102(b) over “the Wild reference.” Claims 53-54 and 60 were rejected under 35 U.S.C. § 102(b) over “the McDaniel (AZ) reference.” Claims 61-63 were rejected under 35 U.S.C. § 102(b), or alternatively under 35 U.S.C. § 103, over Wild or McDaniel (AZ). Claims 53-54 and 59-64 were rejected under 35 U.S.C. § 103 over a combination of references, together with either McDaniel (BY) or Wild. Claims 55-57 were rejected under 35 U.S.C. § 103 over the same combination of references, together with McDaniel (BY) or Wild, and further in view of “the Grot reference.”

McDaniel appealed these rejections to the Board. Based on McDaniel’s statement that claims 53-64 are all of a single group, the Board grouped all the claims together on appeal and selected claim 53 as representative of the entire group. The Board then affirmed the § 102 rejections applied to all of the claims. Having affirmed the § 102 rejections, the Board found it unnecessary to separately consider the rejection of the claims under 35 U.S.C. § 103.

On appeal to the Board from a final rejection, the claims are grouped and considered together unless the appellant explains why the claims of the group are believed to be separately patentable by stating that the claims do not stand or fall together, and presents arguments why the claims subject to the same rejection are separately patentable. 37 C.F.R. § 1.192(c)(7).

If the brief fails to meet either requirement, the Board is free to select a single claim from each group of claims subject to a common ground of rejection as representative of all claims in that group.

McDaniel failed to meet these requirements; he simply stated that claims 53-64 are all properly of a single group and argued patentability generally. The Board interpreted McDaniel’s statement and general argument to mean that the claims stand and fall together.

The Federal Circuit ruled that the Board did not err in selecting claim 53 as a representative claim for the purpose of deciding the appeal of the rejections under 35 U.S.C. § 102, encompassing claims 53-54 and 58-63. All of these claims share a common ground of rejection with claim 53. The only § 102 rejection that does not include claim 53 is a § 102(b) rejection of claims 61-63 as anticipated by Wild or McDaniel (AZ). However, the Examiner, in separate rejections, also found claim 53 to be anticipated by Wild as well as by McDaniel (AZ) under 35 U.S.C. § 102(b). Because claims 61-63 were rejected over some of the same references and under the same statutory provision as claim 53, they shared common grounds of rejection with claim 53. Therefore, the Board did not err in selecting claim 53 as representative of the § 102(b) rejection of claims 61-63 over Wild or McDaniel (AZ).

The Court ruled that the Board did err, however, in selecting claim 53 as a representative claim for the purpose of deciding the appeal of claims 55-57. Those claims were rejected under 35 U.S.C. § 103 on a different ground than the § 103 rejection of claim 53. The § 103 rejection of claims 55-57 cited Grot in addition to the combination of references cited against claim 53. Thus, claims 55-57 did not share a common ground of rejection with claim 53. According to the Court, 37 C.F.R. § 1.192(c)(7) does not give the Board carte blanche to ignore the distinctions between separate grounds of rejection and to select the broadest claim rejected on one ground as representative of a separate group of claims subject to a different ground of rejection. The applicant has the right to have each of the grounds of rejection relied on by the Examiner reviewed independently by the Board under 35 U.S.C. § 6(b).