Oliver Wendel Gamble, who appeared pro se in this appeal, filed U.S. Patent Application No. 17/490,077 on September 30, 2021. The application, titled "Method and System for Notation and Grouping of Messages Stored on a Mobile Device," is directed to "[a] messaging system with methods for adding descriptive notes to Emails and Text Messages stored on a mobile device" (Op. 2).
How the rejections built up
In a September 20, 2022 non-final office action, the examiner rejected claims 1-15 and 18 as indefinite under 35 U.S.C. 112(b), identifying insufficient antecedent basis for various limitations. Mr. Gamble amended claims 1, 3, 11, and 12 but offered no amendment or written argument on the other indefiniteness rejections. The June 7, 2023 final office action dropped the rejections his amendments resolved and repeated the others, leaving claims 1-8, 10, 13-15, and 18 rejected as indefinite. In his appeal brief to the Board, he noted that the "[r]equested 35 USC 112 errors will be corrected" and attached the same amended claims (Op. 3). The examiner's separate obviousness rejection was overturned by the Board and was not before the court (Op. 3 n.2).
The Board summarily sustained the indefiniteness rejections of claims 1-8, 10, 13-15, and 18, finding that he had "waived or forfeited" argument by failing to address the examiner's rejection in his appeal brief, and citing 37 C.F.R. 41.37(c)(1)(iv), among other authorities. It also rejected claims 9, 11, 12, 16, 17, 19, and 20 as indefinite because they inherited the same deficiency from the claims they depend from, designating that a new ground of rejection under 37 C.F.R. 41.50(b). In a request for rehearing, Mr. Gamble argued the examiner's rejections for the first time. The Board denied rehearing. Citing 37 C.F.R. 41.52, it refused to consider his new arguments on the examiner-rejected claims, and because the request presented no argument relevant to the newly rejected claims, it declined to reconsider its decision on those claims (Op. 3-4).
What the court held
The panel of Chief Judge Moore and Judges Dyk and Taranto, writing per curiam, gave three reasons. First, Mr. Gamble made no substantive argument on any rejected claim until his reply brief, which forfeited the challenge on appeal, as the court had held in an earlier appeal involving a related application, In re Gamble, No. 2025-1133 (Fed. Cir. May 8, 2025). Second, independent of that conclusion, he forfeited the same arguments before the Board, so the Board did not abuse its discretion in finding forfeiture and summarily sustaining the examiner's rejections of claims 1-8, 10, 13-15, and 18. Third, as to the Board's new ground of rejection for claims 9, 11, 12, 16, 17, 19, and 20, the court saw no reversible error in the denial of rehearing. The rehearing request asserted only that, in view of his arguments on the examiner-rejected claims, the newly rejected claims "no longer inherit any alleged indefiniteness." Because he failed to address the examiner-rejected claims in his appeal to the Board, the court concluded that this "cryptic statement was insufficient to raise arguments with respect to the newly rejected claims" (Op. 5-6).
The court affirmed the Board's decision, with no costs (Op. 6). The affirmance rests on forfeiture, and the opinion does not analyze whether any particular claim term lacks antecedent basis.