United States Federal Circuit

In four civil actions brought under 25 U.S.C. section 145 (2000) challenging the rejection of petitioner's patent applications, district court decision vacating the Board of Patent Appeals and Interferences' (Board) decisions and remanding plaintiff's case is affirmed and remanded where: 1) the district court correctly interpreted the term "ground of rejection" in 37 C.F.R. section 1.192(c)(7) (2000); and 2) the district court's remand order did not require the Board to consider arguments waived by plaintiff.

Appellate Information

• Decided 12/24/2008
• Published 12/24/2008

Judges

• GAJARSA, Circuit Judge., Before NEWMAN and GAJARSA, Circuit Judges, and WARD, District Judge.

Court

• United States Federal Circuit

Counsel

• For Appellees:
  
• Kenneth C. Bass, III Sterne, Kessler, Goldstein & Fox P.L.L.C., of Washington, DC, argued for plaintiff-appellee.   On the brief were Michael I. Martinez and Michael I. Coe, Crowell & Moring, LLP, of Washington, DC. Of counsel on the brief was Gregory L. Roth, Law Offices of Gregory L. Roth, of La Palma, CA. Of counsel was J. Robert Chambers, Wood, Herron & Evans, L.L.P., of Cincinnati, OH., Robert J. McManus, Associate Solicitor Solicitor's Office, United States Patent and Trademark Office, of Arlington, VA, argued for defendant-appellant.   With him on the brief were Stephen Walsh, Acting Solicitor, Thomas W. Krause and William G. Jenks, Associate Solicitors.