IP Law Daily, PATENT—Fed. Cir.: PTAB’s indefiniteness and obviousness rejections of cell phone and email message system patent application affirmed, (May 9, 2025)

By Kevin M. Finson, J.D.

The inventor’s arguments were forfeited because they were not addressed at all, or were addressed only in a conclusory manner, in his opening brief.

A patent applicant’s claims relating to annotation of emails and text messages on a mobile device were each invalid as indefinite or obvious, the U.S. Court of Appeals for the Federal Circuit has held, in affirming a decision by the Patent Trial and Appeal Board. The inventor forfeited argument to the contrary by not addressing indefiniteness in his initial brief and by addressing obviousness only in a conclusory manner (In re Gamble, No. 25-1133 (Fed. Cir. May 8, 2025)).

Oliver Wendel Gamble was the applicant for U.S. Patent Application No. 16/718,124 (the ’124 application), which claimed a method and system to annotate emails or text messages on a mobile device. The patent examiner rejected all of the claims on either obviousness or indefiniteness grounds. On appeal to the Patent Trial and Appeal Board (PTAB), the Board reversed three of the obviousness findings but left in place the indefiniteness findings as to those same claims, so the end result was that all claims were still rejected. Gamble appealed to the Federal Circuit.

Indefiniteness. The court found that Gamble had challenged the indefiniteness holding, but provided no reasoning or argument in support of this position in his brief. The court held that this argument was therefore forfeited.

Obviousness. Gamble stated that the relevant artisan would not have been motivated to combine the two prior art references relied upon by the patent examiner, and that the prior art references did not teach annotating messages. The Federal Circuit held that these arguments were also forfeited, because they were presented in a conclusory manner without any supporting reasoning. On the merits, the court also held that the Board’s decisions on these points were supported by substantial evidence in the form of the plain language of the prior art references.

The Federal Circuit affirmed the rejections as to all claims.

The Case is No. 25-1133.

Judge: Per Curiam.

Attorneys: Oliver Wendel Gamble, pro se. Michael S. Forman, U.S. Patent and Trademark Office, for Coke Morgan Stewart.

Cases: Patent FedCirNews USPTO