CAFC Upholds PTAB Indefiniteness Rejections of Pro Se Applicant’s Message Notation Application

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a decision today in In re Gamble affirming a Patent Trial and Appeal Board (PTAB) decision that sustained an examiner’s rejection of multiple claims of U.S. Patent Application No. 17/490,077 as indefinite under 35 U.S.C. Section 112(b). The CAFC concluded that Oliver Wendel Gamble, who represented himself, forfeited any substantive argument on indefiniteness before the Board and on appeal.

Gamble filed the ‘077 application with the U.S. Patent and Trademark Office (USPTO) on September 30, 2021. The application, titled “Method and System for Notation and Grouping of Messages Stored on a Mobile Device,” is directed to a messaging system for attaching notes to emails and text messages saved on a mobile device. The specification describes a mobile-device application that stores messages in a database alongside metadata in corresponding fields, with editable fields that allow users to annotate messages and searchable fields that allow users to search those annotations. Claim 1 recites a mobile device message notation management system with a memory and at least one processor configured to store electronic communications in editable fields of a searchable table, including fields set aside for user-entered notation and grouping tags.

On September 20, 2022, the examiner issued a non-final office action rejecting claims 1 through 15 and 18 as indefinite under Section 112(b), identifying insufficient antecedent basis for various limitations. Gamble amended claims 1, 3, 11, and 12 in response, with three of those amendments addressing specific issues the examiner identified in claims 1, 11, and 12. The response contained no amendments or written argument directed to the rejections of claims 1 through 8, 10, 13 through 15, and 18.

The examiner issued a final office action on June 7, 2023, dropping the rejections resolved by amendment and otherwise repeating the Section 112(b) rejections. Gamble appealed to the Board, but his appeal brief presented no argument on those rejections. The brief instead stated that the requested Section 112 errors would be corrected and attached the same amended claims submitted earlier.

The Board summarily sustained the rejection of claims 1 through 8, 10, 13 through 15, and 18 after finding that Gamble waived or forfeited argument by failing to address the rejection in his appeal brief. The Board also rejected claims 9, 11, 12, 16, 17, 19, and 20 as indefinite, reasoning that they inherited the same deficiency from the claims on which they depended, and designated this a new ground of rejection under 37 C.F.R. Section 41.50(b). Gamble requested rehearing and, for the first time, provided written argument on the examiner-rejected claims. The Board declined to consider those arguments under 37 C.F.R. Section 41.52 and denied rehearing on the newly rejected claims since the request raised no argument directed to them.

The CAFC reviewed the Board’s legal conclusions de novo, its underlying factual findings for substantial evidence, and its forfeiture determination for abuse of discretion. Gamble characterized the merits of the Section 112(b) rejections as central to the appeal, yet he made no substantive argument on any rejected claim until his reply brief. The CAFC pointed to its earlier decision in In re Gamble, which involved a related application whose claims were rejected on the same grounds and which stated that “[t]he absence of any meaningful argument at all in the opening brief is a forfeiture of the indefiniteness challenge, as an appellant cannot wait until the reply brief to present a meaningful argument.” The CAFC also cited McIntosh v. Department of Defense for the rule that arguments omitted from an opening brief are forfeited, and held that Gamble forfeited his arguments on all of the rejected claims.

Independent of that conclusion, the CAFC determined that Gamble forfeited the same arguments before the Board. In Hyatt v. Dudas, the CAFC explained that when an appellant does not contest a ground of rejection, the Board has “no burden…to consider the merits of that ground of rejection.” The CAFC agreed that Gamble’s appeal brief did not rebut the examiner’s rejection of claims 1 through 8, 10, 13 through 15, and 18, and held that the Board did not abuse its discretion by finding forfeiture and summarily sustaining those rejections.

Regarding claims 9, 11, 12, 16, 17, 19, and 20, the CAFC saw no reversible error in the denial of rehearing. Gamble’s request asserted that the newly rejected claims no longer inherited any indefiniteness in view of the arguments presented for the examiner-rejected claims. Since Gamble failed to address the examiner-rejected claims in his appeal to the Board, the CAFC found that this “cryptic statement was insufficient to raise arguments with respect to the newly rejected claims.”

Ultimately, the CAFC found Gamble’s remaining arguments unpersuasive and affirmed the Board’s decision.

Image Source: Deposit Photos
Author: Billperry
Image ID: 161261406