In re Gamble
Panel: Moore, Dyk, Taranto
The Federal Circuit affirmed the Patent Trial and Appeal Board's rejection of all claims in Oliver Wendel Gamble's patent application directed to a mobile device message notation system under 35 U.S.C. § 112(b) for indefiniteness. Gamble failed to present any substantive argument challenging the examiner's indefiniteness rejections in his appeal brief to the Board, instead merely stating that errors "will be corrected" and appending previously submitted amendments. The Board summarily sustained the rejections based on forfeiture, and when the Board designated a new ground of rejection for dependent claims, Gamble's rehearing request offered only a conclusory statement that those claims no longer inherited indefiniteness deficiencies.
The court applied a two-fold forfeiture analysis, first holding that Gamble forfeited his arguments before the Federal Circuit by raising them for the first time in his reply brief rather than his opening brief, consistent with Gamble I (a companion case involving a related application). Second, the court held the Board did not abuse its discretion in finding forfeiture at the administrative level under Hyatt v. Dudas and In re Google Tech. Holdings, emphasizing that when an appellant fails to contest a ground of rejection before the Board, the Board has no burden to consider its merits and may treat arguments as waived. The court reviewed the Board's forfeiture determination for abuse of discretion, the legal conclusions de novo, and underlying factual findings for substantial evidence.