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Patent Law at M. Carvalho
On appeal briefs to the BPAI the Appellants must present a showing of good cause as to why the arguments were not submitted earlier even if Appellant's arguments are in the Reply Brief in conformity with 37 C.F.R. § 41.37(c)(1)(vii).
December 17th, 2010
Nanotechnology: The Reply Brief
Legal Principles: Appeal Briefs.
The purpose of the principal brief on appeal is to show that the Examiner erred in rejecting the claims. The reply brief gives to the appellant an opportunity to have the last word on an issue raised by the Examiner. Thus, the reply brief permits the appellant to address any new grounds of rejection the Examiner may have raised in the answer, or to address changes or progresses in the law that may have occurred following the filing of the principal brief.
The regulation of arguments made on appeal briefs are covered by 37 CFR § 41.37: "Any arguments or authorities not included in the brief or a reply brief filed pursuant to § 41.41 will be refused consideration by the Board, unless good cause is shown." This section requires that appellants submit all the best arguments. Any bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived. 37 CFR § 41.41 takes care of the formalities of reply briefs but does not refer how to develop the content: "A reply brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other evidence."
In Ex parte Borden, 93 USPQ2d 1473 (informative) (BPAI Jan. 7, 2010) an expanded panel treated reply briefs differently than appeal briefs. The issue was whether arguments that could have been presented in the principal brief on Appeal, but were not, may be submitted in the reply brief in the absence of a good cause showing. The Board of Patent Appeals and Interferences (BPAI) concluded that the regulations set out in 37 C.F.R. § 41, Practice Before the Board of Patent Appeals and Interferences, do not require the Board to consider such belated arguments: "The reply brief is not an opportunity to make arguments that could have been made during prosecution, but were not. Nor 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."
Ex parte Letant et. al., Appeal No. 2009-010044 (BPAI 10/14/2010).
In this case the BPAI decision considered the situation where a patent applicant presents arguments in a reply brief even though the arguments could have been raised by in the principal brief. The BPAI decision informs us that the Rules are mechanic: 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.
The invention relates to scintillator materials. Specifically, the invention comprises a gamma ray detection apparatus for detecting gamma rays with a nano-material scintillator media that receives gamma rays and produces a scintillation signal.
Appellants appealed a final rejection of claims 1-49 as being anticipated under §102(b) and as being obvious under §103. The BPAI found that Appellants' Appeal Brief's contentions were merely a blanket request for reviewing the rejections to see if they were in error on their face. In Appellants' Reply Brief, the Appellants raised new arguments against the rejections but failed to explain what "good cause" there might be to consider the new argument. Therefore, the BPAI affirmed the Examiner's rejections.
In summary, a reply brief is acceptable as long as it does not include new developed theories. However, appellants that stay on topic are allowed to explain their original arguments. Under the Board's Rules, an appellant can file a new application (refiling the application under an appropriate provision of 37 C.F.R. § 1.53) or seek continued prosecution, RCE, under § 1.114.
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