In Re Richard C. Beaver

893 F.2d 329, 13 U.S.P.Q. 2d (BNA) 1409, 1989 U.S. App. LEXIS 19538, 1989 WL 155714

• Court: Court of Appeals for the Federal Circuit
• Decided: December 29, 1989
• Docket: 89-1414
• Status: Published

Opinions

PAULINE NEWMAN, Circuit Judge.

On the appeal of Richard C. Beaver from the decision of the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office, rejecting claims 18 through 32, all the claims of patent application Serial No. 828,029, we vacate the Board’s decision for failure to review all the appealed claims in accordance with 37 C.F.R. §§ 1.191, 1.192, and 1.196, thus failing to fulfill the requirements of 35 U.S.C. § 134. We remand for decision on the merits of all the claims.

OPINION

The Board held that applicant Beaver had not preserved the independent appeal of claims 21 through 32. See In re Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed.Cir.1983) (claims not separately argued stand or fall with those that are). However, as Beaver points out, all the appealed claims were separately argued before the Board, in a routine manner. For example, after discussing independent claim 18 and dependent claim 19, Beaver continued:

Claim 20 is also based upon claim 18, and requires that the film positioning assembly includes a film backup plate and a film pressure plate, with the pressure plate yieldably urging the film against the backup plate.

Neither Stechbart nor Wolf describes the construction of the film positioning assembly.

Thus Stechbart refers to a usual exposure apertured film guide generally designated at 17, which is fixed with the magazine.

Wolf merely refers to a rectangular exposure window 134 located adjacent to “a film guide bracket 135” provided in the cassette and secured to the bottom wall 129 parallel to front wall 60 and located to guide a film strip 57 past the exposure window 134.

Claim 21 is based on claim 20, and further requires that the position of the film backup plate is adjustable relative to the front wall of the magazine, to achieve a fixed relationship between the lens mount and the film when the latter is against the backup plate.

Obviously, neither Stechbart nor Wolf discloses an adjustable film backup plate.

Claim 22 is based on claim 21, and further requires that the film backup plate is adjustably supported between the bottom wall of the film magazine and a top plate which is fixed relatively to the front wall of the film magazine.

Obviously, neither Stechbart nor Wolf discloses this type of a construction.

Claim 23 is based on claim 22, and further requires that one end of the top plate receives the shaft of an idler roller of the film guide means, and the other end receives the shaft of the film engaging sprocket, and said backup plate extends between said roller and said sprocket.

Obviously, neither Stechbart nor Wolf includes this type of construction.

Similar arguments were made for the other claims. Although concise, the arguments pointed out the essential elements as compared with prior claims, and the inapplicability of the cited references, which had previously been discussed in the brief. The Examiner’s Answer responded to these arguments; see the following illustration:

Claim 23 recites the mounting of the idler roller, the sprocket, and the back-up plate broadly as shown in applicant’s Figure 3. However, such a recitation would be broadly met by the mounting shown in Figure 1 of Wolf where the top plate is the top of the magazine. Claim 25 recites the open-sided aperture at the front of the magazine for slidably receiving the pressure unit. However, Wolf shows that the practice of adjustably mounting components on the side of the aperture is well known in the art. Note Figure 6 and column 5, lines 42-65.

The Board, despite this straightforward exposition of both sides of the argument of claims 21 through 32, stated “we do not consider a summary of the subject matter of claims 21 through 32 as a separate argument for patentability of these claims”, and refused to review them.

During prosecution before the examiner each claim was examined, as law and practice require. Each was appealed. The subordinate claims by their nature required fewer words of explanation on appeal. The argument of these claims was apparently not deemed inadequate by the Examiner, and was incorrectly so deemed by the Board. That Beaver did not repeat, in his argument for the subordinate claims, everything he had already said in arguing his principal claims did not convert “dependent” claims into nonentities. “A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.” 35 U.S.C. § 112 ¶ 4. Further, not all of claims 21 through 32 were in dependent form. There is no basis whatsoever for the line drawn by the Board holding the argument for claim 20 sufficient and that for claim 21 insufficient, or for the Board’s holding that no claim after claim 20 had been separately argued. See In re Nielson, 816 F.2d 1567, 1570, 2 USPQ2d 1525, 1526-27 (Fed.Cir. 1987) (Board erred in stating that appellant failed to argue the dependent claims separately).

The public responsibility of the Patent and Trademark Office requires attentive performance of all aspects of the patent examination function. The Office is charged with the duty of examining the claims contained in the patent application, including review by the Board when appeal is taken under 35 U.S.C. § 134. It is not only unfair to the applicant, it is also inefficient to decline to review claims that are properly appealed and reasonably argued before the Board.

We vacate the Board’s decision, and remand with instructions to redetermine the issues as to all the claims on appeal.

VACATED AND REMANDED.