In re Riggs

457 F. App'x 923
CourtCourt of Appeals for the Federal Circuit
DecidedApril 12, 2011
DocketNo. 2010-1320
StatusPublished
Cited by2 cases

This text of 457 F. App'x 923 (In re Riggs) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
In re Riggs, 457 F. App'x 923 (Fed. Cir. 2011).

Opinion

ORDER

RADER, Chief Judge.

The Board of Patent Appeals and Interferences (“Board”) returned an appeal to the Examiner, vacated an erroneous docketing notice, and declined to expunge documents from the record. Because the Board’s orders resolved only procedural matters without addressing the merits of any rejection, this Court dismisses this appeal for lack of jurisdiction.

Background

Appellants (“Riggs”) applied for a utility patent entitled “Transport Logistics Systems and Methods” on July 27, 2001, and filed the continuation application at issue on December 7, 2004. After an initial round of prosecution, the Examiner issued a July 20, 2007, final office action rejecting the claims in Riggs’ patent application under 35 U.S.C. §§ 101, 102, 103, and 112. By petition, Riggs challenged the finality of the office action and the Examiner’s decision to take “official notice” of certain facts (“Petition I,” filed October 22, 2007). On January 22, 2008, Riggs also appealed [924]*924the Examiner’s final rejection to the Board and raised the same issues challenged in Petition I. Following a denial of Petition I, Riggs petitioned for reconsideration of Petition I with the Deputy Commissioner for Patent Examination Policy on December 23, 2008 (“Petition II”). Meanwhile, Riggs also filed a district court Administrative Procedures Act (“APA”) action on November 26, 2008, challenging the issues presented in Petition I.

While Petition II and the APA action were pending, the appeal before the Board proceeded. After Riggs filed a reply brief with the United States Patent and Trademark Office (“PTO”) on April 6, 2009, the Board returned the appeal to the Examiner for consideration of Petition II. On August 31, 2009, in a Supplemental Examiner’s Answer, the Examiner withdrew all rejections, including the one based on “official notice,” as requested in Petition II, and returned the appeal to the Board citing new grounds of rejection. The Board found the Supplemental Examiner’s Answer’s new grounds of rejection procedurally incorrect under Rule 41.43(a)(2) and MPEP § 1207.05. Accordingly, the Board issued an order (“Order I”) on December 3, 2009, returning the appeal to the Examiner to correct the error. On December 29, 2009, before the Examiner corrected the error, the Board erroneously entered a docketing notice for the appeal. Upon discovery of the error, the Board vacated that notice with a March 8, 2010, order (“Order II”) on the grounds that jurisdiction over the application remained with the Examiner. The Board’s third and final order on March 9, 2010, (“Order III”) denied Riggs’ request to expunge the Supplemental Examiner’s Answer because jurisdiction lay with the Examiner.

Although the PTO initially dismissed Petition II as moot in light of the Supplemental Examiner’s Answer, on April 29, 2010, the Deputy Commissioner reconsidered and granted Petition II as a result of the three Board orders. The Deputy Commissioner’s decision granting Petition II directed the Examiner to either withdraw the rejections based on taking “official notice” or enter the new grounds of rejection in a new non-final office action. In summary, the PTO granted Petition II, thereby providing the requested relief, while Appellants want the Board to proceed with the original appeal as if Petition II had not been granted. As a result, Appellants request that the Board review a rejection that the PTO has already withdrawn.

Discussion

At the outset, this Court must consider its jurisdiction to review the Board’s orders. Appellants argue that this Court possesses jurisdiction over “the Board’s decision (or lack of decision) pursuant to 28 U.S.C. § 1295(a)(4) and 35 U.S.C. § 141.” The relevant parts of § 1295(a)(4) and § 141 allow for an appeal from a “decision” of the Board. Appellants have the burden of establishing jurisdiction. See Alder Terrace, Inc. v. United States, 161 F.3d 1372, 1377 (Fed.Cir.1998). This Court reviews jurisdictional decisions without deference. In re Gartside, 203 F.3d 1305, 1315 (Fed.Cir.2000).

This Court has unambiguously interpreted the word “decision” in 28 U.S.C. § 1295(a)(4) to “mean[ ] a final dispositive ruling that ends litigation on the merits.” Copelands’ Enters., Inc. v. CNV, Inc., 887 F.2d 1065, 1067-68 (Fed.Cir.1989) (en bane) (quoting Champion Prods., Inc. v. Ohio State Univ., 614 F.2d 763, 765 (CCPA 1980)). When applying § 1294(a)(4), this Court stated “it is settled law that a court generally does not have jurisdiction when no final judgment has been rendered, and a remand for further agency proceedings is generally not a final [925]*925judgment.” Hyatt v. Dudas, 492 F.3d 1365, 1368 (Fed.Cir.2007). Similarly, 35 U.S.C. § 141 requires that the Board, in a statutory capacity, dispose of the appeal through adjudication of a legal right. In re James, 57 C.C.P.A. 1371, 432 F.2d 473, 475 (CCPA 1970). Thus, this Court only reviews Board decisions that have addressed, at least indirectly, the merits of an Examiner’s rejection. In re Haas, 486 F.2d 1053, 1055 (CCPA 1973) (“[I]n order to confer subject matter jurisdiction upon us, the board must have reviewed an adverse decision of the Examiner relating at least indirectly to a rejection of the claims.”). Furthermore, Board actions relating to procedural matters applying PTO rules “are outside the scope of our authority to review.” In re James, 432 F.2d at 476.

In this case, none of the Board’s orders adjudicated the merits of the rejections in Riggs’ application. Instead, the orders only related to the implementation of procedural matters under PTO rules. Such procedural matters are generally entitled to “controlling weight” unless they are plainly erroneous or inconsistent with the regulation. Hyatt v. Dudas, 551 F.3d 1307, 1311 (Fed.Cir.2008) (citing Bowles v. Seminole Rock & Sand Co., 325 U.S. 410, 414, 65 S.Ct. 1215, 89 L.Ed. 1700(1945)).

The Board’s Order I returned the un-docketed appeal to the Examiner in accordance with 37 C.F.R.

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Related

In Re RIGGS
Federal Circuit, 2025
Odyssey Logistics and Tech. v. Iancu
959 F.3d 1104 (Federal Circuit, 2020)

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Bluebook (online)
457 F. App'x 923, Counsel Stack Legal Research, https://law.counselstack.com/opinion/in-re-riggs-cafc-2011.