Arguing The Dependent Claims On Appeal
Many applicants on appeal present arguments solely for independent claims. This makes sense if the dependent claims cover subject matter not of interest to the client, or subject matter shown by the cited references. However, often an applicant can use dependent claims strategically to add more claim language in a way that further differentiates the applied references and to provide back-up positions in case the main arguments fail on appeal, for example. This can be especially helpful when the practitioner recognizes early on that an appeal may be needed and so can preload the depending claims with helpful language in a non-final action so that the path to appeal is cleared upon receiving the final rejection. In such cases, the dependent claims can be key backstops.
Coca-Cola’s outside counsel knows this well and used such an approach on a recent appeal for an application related to a new beverage supply machine design. The case is 15/521,488.
The claims on appeal were directed to a beverage supply apparatus:
1. A beverage supply apparatus that supplies two or morekinds of beverages, the beverage supply apparatus comprising:a plurality of nozzles that discharges the two or more kinds of beverages;a touch panel that displays selection options of the two or more kinds of beverages and receives a selection operation for selecting one of the two or more kinds of beverages;a plurality of physical buttons that corresponds to the plurality of nozzles and that receives a request to discharge the beverage selected by the selection operation; anda control section that specifies a physical button corresponding to a nozzle from which the beverage selected by the selection operation is discharged from among the plurality of the physical buttons, the control section controlling the touch panel to indicate the specified physical button.
While the rejection of the main claim was affirmed by the Board, Coke won a reversal on dependent claim 3 because they specifically argued that additional features in claim 3 further differentiated the applied reference. Specifically, even though the claim added a feature that at first glance seemed to be nothing special, when considering the applied references there was a significant distinction that could be argued, and the PTAB agreed:
The Appellant argues that Moriya is “silent on holding the indication of the specified physical button for a predetermined period after discharge of the beverage.” Appeal Br. 8 (emphasis added). We agree with the Appellant. Although the Examiner appears to be correct in finding that the control section inherently holds information of the beverage selected to operate the dispenser, neither the Examiner’s cited portions of Moriya nor our review of Moriya indicates that its controller “continues the indication of the specified physical button for a predetermined period after discharge of the beverage selected by the selection operation is completed,” as recited by claim 3 (emphasis added). The cited portions of Moriya, although disclosing illumination of the beverage selection button and position lighting, are not pertinent to any time period after the discharge of the beverage has been completed.
It is always good practice to consider how the PTAB might find a way to affirm the rejection of your main claim, and pre-load the dependent claims with further elements to provide a backstop if things go sideways on appeal.