In re Gamble

In re Gamble The Federal Circuit affirmed the Board's decision sustaining the examiner's § 112(b) indefiniteness rejections of all pending claims of the '077 application. Mr. Gamble forfeited any substantive argument both before the Board (by not contesting the rejections in his appeal brief) and before the court (by not raising any in his opening brief), and his rehearing request did not meaningfully address the newly rejected dependent claims. A reminder that an applicant who does not contest a ground of rejection in the Board appeal brief, or who offers no substantive argument in the opening brief at the Federal Circuit, loses the issue at each level, and a rehearing request cannot cure that. Affirmed. The examiner rejected claims as indefinite under § 112(b) for insufficient antecedent basis; Mr. Gamble amended some claims but offered no amendment or argument on the other rejections, and his Board appeal brief offered no argument, saying only that the errors 'will be corrected.' The Board summarily sustained the rejections of claims 1–8, 10, 13–15, and 18 as waived or forfeited, and newly rejected dependent claims 9, 11, 12, 16, 17, 19, and 20 as inheriting the same deficiency, designating this a new ground of rejection. The Federal Circuit held that Mr. Gamble made no substantive argument until his reply brief, which forfeits the indefiniteness challenge, following a prior appeal involving a related application. Independently, the Board did not abuse its discretion in finding forfeiture, because the appeal brief did not rebut the examiner's rejection. The Board's denial of rehearing on the newly rejected claims was not reversible error because the request's statement that those claims 'no longer inherit' indefiniteness depended on arguments never made to the Board on the examiner-rejected claims. § 112(b) waiver / forfeiture non-precedential