In Re Lovin
652 F.3d 1349
| Fed. Cir. | 2011Background
- Lovin filed the '633 application directed to a friction welding method and system on August 24, 2004 to reduce upset variation by modulating torque.
- The '633 application includes 34 claims; independent claims are 1, 8, 17, 23, 30, and 34; the rest are dependent.
- The examiner rejected claims 1-24 and 30-34 as obvious over Benn, Takagi, and Ludewig.
- Board of Patent Appeals and Interferences affirmed the examiner’s obviousness rejections and treated dependent claims as grouped with independent claims.
- Lovin appealed, asserting Rule 41.37 requires separate consideration of dependent claims; the Board and now the court defer to PTO interpretation of Rule 41.37.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the Board correctly applied Rule 41.37 | Lovin argues separate patentability arguments for dependent claims were provided. | PTO contends Rule 41.37 requires more than bare recitation; the Board’s interpretation is entitled to deference. | Board’s interpretation reasonable; dependent claims waived for lack of separate arguments. |
Key Cases Cited
- Bowles v. Seminole Rock & Sand Co., 325 U.S. 410 (1945) (agency interpretation of its regulations controls unless plainly erroneous)
- Auer v. Robbins, 519 U.S. 452 (1997) (controlling weight to agency interpretation of its own regulation)
- National Cable & Telecommunications Ass'n v. Brand X Internet Services, 545 U.S. 967 (2005) (Chevron deference possible; agency interpretation allowed when ambiguity exists)
- Star Fruits S.N.C. v. United States, 393 F.3d 1277 (Fed. Cir. 2005) (PTO authority to require information in rule interpretations)
- In re Garner, 508 F.3d 1376 (Fed. Cir. 2007) (PTO interpretations of its regulations entitled to substantial deference)
- In re Sullivan, 362 F.3d 1324 (Fed. Cir. 2004) (deference to PTO regulation interpretation; standard for review of regulatory interpretations)
- Beaver, 893 F.2d 329 (Fed. Cir. 1989) (prior view on separate patentability of dependent claims under predecessor rule)
- Nielsen, 816 F.2d 1567 (Fed. Cir. 1987) (dependent claims argument sufficiency before examiner)