Ex parte Letts

When an appellant in an ex parte appeal offers to cancel a claim only on condition that the Board take or refrain from taking action on other claims, the offer is ineffective and the claim remains in the appeal. The Board does not enter contingent arrangements in which withdrawal or dismissal of a claim is conditioned on commitments to or restrictions on future Board action. The proper course is to file an amendment canceling the claim under 37 C.F.R. § 41.33(b)(1). No prior precedent directly addressed this issue; the Board said it was acting without informative Board precedent, and it cited Dawson v. Dallavalle, an interference decision, by analogy for the rule against conditional concessions. For the examiner, a claim whose cancellation is merely offered conditionally stays pending, and an affirmance on it remains final. For appellants, a conditional offer to cancel does not remove a claim from the appeal. If the claim is the broadest and no claims are separately argued, it can decide the whole appeal under 37 C.F.R. § 41.37(c)(1)(vii), and the Board said it should not be expected to excuse that outcome in future. The Board relied on Key Pharmaceuticals v. Hercon Labs. Corp., 161 F.3d 709 (Fed. Cir. 1998), for its discretionary "abundance of fairness" remand in this case; that is not a binding rule that applies in later cases. LEGAL TEST OR STANDARD: Policy, based on a need for efficient handling of the ex parte appeal and inter partes interference dockets: the Board does not enter into contingent arrangements in which withdrawal or dismissal of a claim is conditioned upon commitments to or restrictions on future Board action. An appellant who wants an appeal withdrawn or dismissed as to a particular claim should file an amendment canceling it (37 C.F.R. § 41.33(b)(1)). Separately, claims grouped without separate argument stand or fall together under 37 C.F.R. § 41.37(c)(1)(vii). TRIGGERING FACTS: The appeal brief and reply brief offered to cancel claim 7 and its dependents 'upon favorable consideration of claims 1 and 15', and counsel repeated the offer at oral hearing. Claim 7 was never canceled and no withdrawal or dismissal was requested. No claim was separately argued, so the merits panel decided the appeal on broadest claim 7 and affirmed. On rehearing, appellant did not dispute that affirmance and did not argue the panel misapprehended or overlooked anything as to claim 7. KEY QUOTE: "Thus, an Appellant in an ex parte appeal may not seek to have a claim withdrawn or dismissed from an appeal based on a condition that the Board take or refrain from taking action on one or more other claims." (slip op. at 8) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board cited Dawson v. Dallavalle, Interference 105,223 (BPAI Sep. 18, 2007) (concession of priority in interference cannot be conditioned on limitation on future action by USPTO) in support of the policy, and followed Key Pharmaceuticals v. Hercon Labs. Corp., 161 F.3d 709, 715-16 (Fed. Cir. 1998), and Quadrant Drug Delivery Ltd. v. Nektar Therapeutics, 76 USPQ2d 1518, 1523 (BPAI 2005), for the abundance-of-fairness remand. PRACTICE TIP: If you do not want a claim decided on appeal, file an amendment canceling it under 37 C.F.R. § 41.33(b)(1) rather than offering conditional cancellation in the brief, and argue claims separately under their own subheadings so the broadest claim does not decide the whole appeal.