The PTO need not evaluate unargued limitations in a motion to amend during inter partes review. Here, for example, the PTO’s failure to evaluate objective indicia of non-obviousness and various new limitations in certain proposed claims was found to be proper because the patentee did not argue them. “Denial of a motion to amend in compliance with the APA only requires that the Board show that it fully considered the particular arguments raised by the patentee and that it provided a reasoned explanation for why those arguments were unpersuasive.” It may therefore be best to argue all avenues for patentability in conjunction with a motion to amend during inter partes review.
Background / Facts: The patent on appeal here from inter partes review proceedings at the PTO is directed to automated swimming pool cleaners. In its motion to amend, the patentee argued that the prior art does not render the proposed substitute claims obvious because it does not suggest a particular vector limitation. Although the patentee referenced the other added limitations, it did not argue that those other limitations would have been non-obvious.
Issue(s): Whether the Board abused its discretion by failing to evaluate objective indicia of non-obviousness and various new limitations in the proposed claims, even though the patentee did not argue that those indicia and limitations distinguish the proposed claims over the prior art.
Holding(s): No. “We find no abuse of discretion. The burden of showing that the substitute claims were patentable rested with [the patentee]. It therefore follows that the Board’s evaluation of [the patentee’s] motion to amend was limited to considering only those arguments that [the patentee] actually raised. To hold otherwise would require the Board to fully reexamine the proposed claims in the first instance, effectively shifting the burden from the patentee to the Board. Denial of a motion to amend in compliance with the APA only requires that the Board show that it fully considered the particular arguments raised by the patentee and that it provided a reasoned explanation for why those arguments were unpersuasive. Those requirements were satisfied here.”