457 F. App'x 923
Fed. Cir.2011Background
- Riggs applied for a utility patent (Transport Logistics Systems and Methods) in 2001 and filed a continuation in 2004.
- The Examiner issued a final rejection on July 20, 2007 under 35 U.S.C. §§ 101, 102, 103, and 112.
- Riggs challenged the rejection via Petition I (Oct 22, 2007) and appealed to the Board on Jan 22, 2008.
- Riggs filed Petition II and an APA action while the Board proceedings continued; the Board issued multiple procedural orders (Order I, II, III) between 2009 and 2010.
- The PTO granted Petition II in April 2010, but Riggs argued the Board should review the original appeal as if Petition II had not been granted; the court dismissed the appeal for lack of jurisdiction because the Board’s orders addressed only procedural matters, not the merits.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the Board’s procedural orders confer jurisdiction | Riggs asserts §1295(a)(4) and §141 give jurisdiction over the Board's decision. | Board actions were procedural and not a final adjudication of the examiner’s rejections. | No jurisdiction; Board did not adjudicate merits. |
| Whether Petition II’s grant affects Board jurisdiction over the appeal | Board should proceed as if Petition II never granted. | Petition II relief changes the procedural posture; the Board lacks final adverse decision. | Lacked final disposition on patentability; no jurisdiction. |
| Whether the Board’s actions were within the scope of 37 C.F.R. § 41.7 and § 41.43(a)(2) | Board had authority to expunge or manage the record under § 41.7. | Section § 41.7 is discretionary and does not confer jurisdiction; no merits decision. | Procedural actions were within reasonable interpretation and did not confer jurisdiction. |
Key Cases Cited
- In re Haas, 486 F.2d 1053 (CCPA 1973) (withdrawal of claims plus Board finding of no jurisdiction can confer jurisdiction when it affects patentability)
- In re Szajna, 422 F.2d 443 (CCPA 1970) (Board may consider merits; otherwise no jurisdiction)
- In re Voss, 557 F.2d 812 (CCPA 1977) (reopening prosecution not a rejection; no adverse patentability ruling)
- Hyatt v. Dudas, 551 F.3d 1307 (Fed. Cir. 2008) (procedural rulings generally controlling unless clearly erroneous)
- Copelands’ Enters., Inc. v. CNV, Inc., 887 F.2d 1065 (Fed. Cir. 1989) (definition of final dispositive ruling; 'decision' ends litigation on the merits)