Dangers of treating all independent claims the same

Takeaway: When relying on the same argument for multiple independent claims, make sure the same argument actually applies to all the different claims.

Details:

The application in Ex parte Kotzin (PTAB 2012) was directed to "a presence attribute information server and manager." Claims 1 and 15 were system claims which essentially described storage of "user presence attribute information" and "associated access authorization information" with wherein clauses further describing this information. Claim 23 was a method claim directed to determining whether a user requesting presence attribute information is authorized to have access.

The Examiner rejected independent claims 1 and 15, and various dependent claims of 1 and 15, as obvious over Applicant's Admitted Prior Art (AAPA) and Raverdy. The Examiner then used AAPA, Raverdy, and a third reference, Wade, to reject several other dependent claims of 1 and 15, as well as independent claim 23.

The Appeal Brief contained a section for independent claims 1 and 15, arguing that AAPA did not teach the recited wherein clauses that described the "access authorization information," and that Raverdy did not cure the deficiency. The Appeal Brief contained another section for the rejection of independent claim 23 and several dependents of 1 and 15. This section did not make a specific argument for this set of claims, and instead merely stated that the rejection "continues to rely upon [mischaracterizations], an inappropriate combination with Raverdy and/or a misinterpretation" and then arguing that the third reference (Wade) "similarly fails to account for the claimed features" that were allegedly taught by AAPA.

The Board was persuaded by the Applicant's argument independent claims 1 and 15, and therefore reversed the first rejection. However, with respect to the second rejection, the Board noted that while Applicant relied on the same arguments for claim 23 that were made for 1 and 15, "claim 23 has different scope than claims 1 and 15" and "the Examiner combines different teachings in a different way to reject claim 23."  The Board then affirmed this second rejection since the Applicant did not show error.

The application in Ex parte Harris (PTAB 2012) was directed to aggregating individualized programs onto a single channel, and allocating the channel bandwidth "as-needed for provision of short video programs on an 'on demand' basis." The application was filed with five independent claims: a server device (claim 18);  a client device (claim 16); a method (claim 1) directed to a server-client combination; a system (claim 10) also directed to the combination; and a computer-readable medium (claim 20) directed to the combination.

The Examiner rejected all the independent claims as obvious over Dunn and Klosterman. The Examiner explained the rejection of claim 1 in detail, but the rejection of the other independent claims merely said "see the rejection of claim 1." The Applicant argued without amending, and appealed when the Examiner maintained the rejection.

The Appeal Brief contained a section for the first rejection of all the independent claims and some dependents. The Applicant first addressed method claim 1, which included a step of a server broadcasting modules to a client, but not in response to a client request. Claim 1 also included retrieving one of the broadcast modules at the client in response to a matching condition. The Applicant argued that Dunn did not teach the retrieving step since the modules retrieved in Dunn were sent in response to a client request, which contradicted the language of claim 1. In this same section of the Appeal Brief, the Applicant argued that "as each of independent claims 10, 16, 18, and 20 include similar features, each of these claims is believed patentably distinguished for similar reasons."

The  Examiner's Answer continued to reject claims 10, 16, 18, and 20 on the same basis as claim 1, though the claims had different scope.

The Board found the Applicant's arguments about Dunn to be persuasive, and so reversed the rejection of combination method claim 1. The Board also reversed the rejection of combination system claim 10, combination CRM claim 20, and client device claim 16.

However, the Board treated server claim 18 differently. The Board noted that although the Applicant contended that claim 18 was similar to claim 1, "we do not find [this argument] to be commensurate to be commensurate to claim 18 limitations." The Board then turned to the Examiner's Answer, which stated only that claim 18 was rejected for the same reasons as claim 1. But, the Board explained, claim 18 included server limitations not present in claim 1, namely, ones related to receiving a video request from the client, retrieving the requested video, and conveying it to the client. 

Accordingly, the statement of reasons for rejecting claim 18 (see Ans. 6) is problematically deficient because in order for us to sustain this rejection would necessitate our resorting to impermissible speculation or unfounded assumptions or rationales to supply deficiencies in the factual bases of the rejection. In re Warner, 379 F.2d 1011, 1017 (CCPA 1976).  We, accordingly, will not sustain the rejection of claim 18 nor the rejection of its dependent claim. 

My two cents: In both cases, the Applicant was sloppy in not addressing differences between claims. This problem was fatal in Ex parte Kotzin, where the feature relied on by the Applicant was simply  not present in one of the independent claims. The Applicant fared better in Ex parte Harris, and in fact, the Examiner got his hand slapped for a sloppy rejection. However, the burden is on the Applicant to point out error, and you certainly can't rely on the Board to look for weaknesses in the rejection.

Suppose the Board did not hand the Applicant this gift of (essentially) finding the rejection of server claim 18 deficient on procedural grounds. I think the Applicant in Harris unnecessarily weakened his argument by treating all independents exactly the same.

The Applicant did argue a feature present in all the independent claims -- broadcast but not in response to a client request. That's important. But not necessarily enough. By arguing this feature in the context of claim 1, the Applicant also mixed in client features of claim 1 – retrieving modules. What if the Board viewed this as an argument about the combined feature present in claims 1, 10, and 20? In that case, the argument would not have directly addressed the server-only feature, and the Board might have affirmed the rejection of claim 18.

Be very careful in grouping independent claims together.  If the limitations really are the same, maybe there's no harm in relying on the same arguments. But if the limitations are even slightly different – and I mean in a way that matters, not merely in verb tense – you should probably make separate arguments, even if the arguments are similar at some level.