Simply prompting the Board during an appeal to acknowledge a given issue in responding to arguments for a fundamentally separate issue is not sufficient to preserve the first issue for further appellate proceedings. In order to make sure that the issue is preserved, at least the “essence of [the] present arguments” must be raised to the Board directly, not tangentially.
Background / Facts: The patents on appeal here from rejection at the PTO during reexamination are directed to electrical connectors for interfacing between a junction box and electrical conductors, such as metal-clad cables, using an access hole in the junction box. The claims require, among other elements, a tubular “spring steel” adapter in the outbound end of the connector housing. The prior art does not specifically disclose the use of spring steel for such an adapter. On appeal at the PTO, the patentee did not argue to the Board that the examiner lacked evidence to support the substitution of spring steel as the adapter material. Instead, it argued to the Board that the prior art did not disclose the claimed spring steel adapter’s outwardly extending tangs, prompting the Board to acknowledge that the prior art’s bushing was not made of spring steel.
Issue(s): Whether the patentee preserved the issue of the adapter material composition for further appellate proceedings by simply prompting the Board to tangentially acknowledge the issue.
Holding(s): No. “Though Arlington disputed a number of aspects concerning the combination with [the prior art]—such as whether the resulting combination would establish a ground connection or whether [the prior art] was intended to be permanent—the examiner’s and the Board’s conclusion that it would have been obvious to make the [prior art] bushing from spring steel was not one of the disputes that was raised. … We ‘generally do not consider arguments that the applicant failed to present to the Board’ and see no exceptional circumstances here requiring otherwise.”