The opinion of the court was delivered by: Louis F. Oberdorfer United States District Judge
Plaintiff Harold Putnam tried to patent an "automatic transaction machine," commonly known as an automatic teller machine or ATM, with the U.S. Patent & Trademark Office. When the patent examiner rejected all fifty-six claims in his application, Plaintiff appealed to the Board of Patent Appeals and Interferences. The Board affirmed the patent examiner in part. In doing so, the Board concluded that Plaintiff had not properly briefed his appeal and therefore declined to consider either his appeal brief or his reply brief. This decision to disregard Plaintiff's briefs resulted in the Board summarily affirming the rejection of claims 45-56, which are at the center of Defendant's Motion to Exclude, or in the Alternative, Dismiss and Remand [Dkt. No. 11].*fn1 Defendant moves to exclude any arguments or evidence pertaining to these claims because, it argues, Plaintiff did not properly raise them in the agency. Alternatively, Defendant asks the Court to remand the matter to the Patent Office so it may fully consider Plaintiff's claims, including newly discovered evidence that relates to the patent application. For the following reasons, the Court concludes that remanding the matter to the Patent Office to fully consider these claims is the proper recourse.
Plaintiff*fn2 filed a patent application with the PTO on January 19, 1999, seeking to patent a novel automated transaction machine, commonly known as an ATM. The 40-claim application was initially rejected by the patent examiner. On August 7, 2001, Plaintiff amended his application by both modifying some existing claims (claims 13, 20-22, 24-27, 32 and 40) and adding several new claims (claims 41-56). He asked the examiner to reconsider the application. Two months later, the patent examiner rejected all 56 claims in a final action. Plaintiff appealed to the Board of Patent Appeals and Interferences, filing a sixty-five page appeal brief describing his invention and addressing, in great detail, each of the fifty-six rejected claims. He argued that claims 45-56 were not obvious as the patent examiner had concluded.*fn3 The patent examiner filed an answer in response, reiterating his reasons for rejecting all fifty-six claims.*fn4 The examiner argued that he properly rejected claims 45-56 under 35 U.S.C. § 103(a) because they were obvious in light of an earlier patent. Plaintiff then filed a short reply brief, addressing arguments raised in the patent examiner's answer. Plaintiff did not repeat every argument appearing his opening brief, but targeted issues that emerged in the examiner's answer.
After review, the Board concluded the appeal was "not ready for a decision on the merits," and remanded the application to the examiner. The Board was apparently perplexed by several aspects of the examiner's answer. For example, the Board noted that the examiner had rejected Plaintiff's amended 56-claim application because it introduced new material into the disclosure. While the examiner relied on 35 U.S.C. § 132*fn5 for this rejection, the Board thought this was a mistake. The proper basis was 35 U.S.C. § 112.*fn6 See In re Rasmussen, 650 F.2d 1212, 1214 (C.C.P.A. 1981) ("The proper basis for rejection of a claim amended to recite elements thought to be without support in the original disclosure, therefore, is § 112, first paragraph, not § 132."). The Board was similarly confused by the examiner's explanation for rejecting the amended application, noting that it was "uncertain about claims 46 and 48-51." Rather than speculate as to the examiner's reasons for the rejection, the Board remanded the application to the examiner for clarification. The Board ended its order with an instruction for each side. With respect to the examiner, the Board instructed:
[W]e remand the application to the examiner for further action not inconsistent with the views expressed herein. Any subsequent examiner's answer submitted by the examiner should be self-contained with respect to all rejections and arguments; no prior answer or Office actions should be referenced or incorporated therein.
With respect to Plaintiff, the Board instructed:
Similarly, any subsequent brief submitted by the appellant should be self-contained with respect to all arguments. No prior briefs should be referenced or incorporated therein.
Consistent with the Board's remand instructions, the examiner filed a second answer that was entirely self-contained and did not reference or incorporate his previous filing. Plaintiff responded with a second reply brief. Plaintiff did not, however, adhere to the Board's instruction that his brief "be self-contained with respect to all arguments." Plaintiff focused his second reply brief only on the issues raised in the examiner's second answer that he considered to be new. He did not reiterate every argument presented in his appeal brief, but incorporated them by reference.*fn7
The Board affirmed the patent examiner, in part, on July 25, 2005. In keeping with its remand order, the Board declined to consider arguments not included in Plaintiff's second reply brief. The Board explained:
In our remand, we directed the appellant that "any subsequent brief submitted by the appellant should be self-contained with respect to all arguments. No prior briefs should be referenced or incorporated therein." . . . . In accordance with our directions, . . . [n]either the prior Reply Brief nor the Brief of Appellant's was considered in deciding this appeal.
See July 25, 2005 Board Order at 9 n.3. Because Plaintiff did not address claims 45-56 in his second reply brief, the Board summarily affirmed the examiner's obviousness rejections with little discussion. See July 25, 2005 Board Order at 29-28 ("The appellant does not address, let alone show, error in the explanation [of the rejection of claims 45-56]. Therefore, we affirm the obviousness rejections of claims 45-56."). The Board cited 37 C.F.R. § ...