In Re: Motupalli ( 2019 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: CALEB SURESH MOTUPALLI,
Appellant
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2019-1889
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 13/516,443.
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Decided: November 8, 2019
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CALEB SURESH MOTUPALLI, Vijayawada, India, pro se.
MAI-TRANG DUC DANG, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Andrei Iancu. Also represented by THOMAS W.
KRAUSE, ROBERT J. MCMANUS, MAUREEN DONOVAN
QUELER.
______________________
Before PROST, Chief Judge, DYK and WALLACH, Circuit
Judges.
PER CURIAM.
Appellant Caleb Suresh Motupalli appeals a decision of
the U.S. Patent and Trademark Office’s Patent Trial and
Appeal Board (“PTAB”) affirming an examiner’s rejections
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of claims 27–29, 31–35, 37–42, and 44–46 (“the Proposed
Claims”) of U.S. Patent Application No. 13/516,443 (“the
’443 application”) under 35 U.S.C. § 112, ¶¶ 1, 2 (2006) 1
and 35 U.S.C. § 101 (2012). J.A. 1–66 (Decision); see
J.A. 1594–624 (Final Office Action). We have jurisdiction
pursuant to 28 U.S.C. § 1295(a)(4)(A) (2012). We affirm.
BACKGROUND
I. The ’443 Application
Entitled “Necktie-Imitating Persona Extender/Envi-
ronment-Integrator and Method for Super-Augmenting a
Persona to Manifest a Pan-Environment Super-Cyborg or
Wedded Avatar of Christ with eThrone for Global Govern-
ance,” J.A. 1007, the ’443 application “relates to cognitive
Information technology engineering of a morphological so-
lution and a handle for the same to the macroscopic prob-
lem of n-entropy[,] i.e[.,] loss of control/information in the
globalized world,” J.A. 1008. Specifically, the ’443 applica-
tion relates to “the use of Christocratic Necked Service Ori-
ented Architecture so that even Global Cyborgic
Conglomerate Christs/Superhumans can be manifested.”
J.A. 1008; see J.A. 71–115 (listing the Proposed Claims).
II. The PTAB Proceedings
The Examiner rejected each of the Proposed Claims on
three independent grounds: (1) § 112, ¶ 1, for lacking ena-
blement, J.A. 1596–610; (2) § 112, ¶ 2, for being indefinite,
1 Congress amended § 112 when it enacted the
Leahy-Smith America Invents Act (“AIA”). Pub. L.
No. 112-29, § 4(c), 125 Stat. 284, 296–97 (2011). AIA § 4(e)
makes those changes applicable to “any patent application
that is filed on or after” September 16, 2012. See id. at 297.
Because the ’443 application was filed before Septem-
ber 16, 2012, see, e.g., J.A. 1 (listing the filing date of the
’443 application as June 15, 2012), pre-AIA § 112 applies.
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J.A. 1610–11; and (3) § 101, for being directed to patent-in-
eligible subject matter, J.A. 1611–13. In February 2018,
Mr. Motupalli appealed the Examiner’s rejections to the
PTAB, and both Mr. Motupalli and the Examiner briefed
the issues on appeal. J.A. 2284–314 (Appeal Brief), 2315–
53 (Examiner’s Answer). In April 2019, the PTAB affirmed
each of the Examiner’s rejections. See J.A. 7–36 (affirming
the Examiner’s § 112, ¶ 1 rejections), 36–38 (affirming the
Examiner’s § 112, ¶ 2 rejections), 39–66 (affirming the Ex-
aminer’s § 101 rejections).
DISCUSSION
I. Standard of Review and Legal Standard
“We review the PTAB’s factual findings for substantial
evidence and its legal conclusions de novo.” Redline Detec-
tion, LLC v. Star Envirotech, Inc., 811 F.3d 435, 449 (Fed.
Cir. 2015) (citation omitted). “Substantial evidence is
something less than the weight of the evidence but more
than a mere scintilla of evidence,” meaning that “[i]t is such
relevant evidence as a reasonable mind might accept as ad-
equate to support a conclusion.” In re NuVasive, Inc., 842
F.3d 1376, 1379–80 (Fed. Cir. 2016) (internal quotation
marks and citations omitted).
Section 112, ¶ 1 provides that “[t]he specification shall
contain a written description of the invention . . . as to en-
able any person [having ordinary] skill[] in the art to which
it pertains [(‘PHOSITA’)] . . . to make and use the same.”
Section 112, ¶ 1’s “enablement requirement is met where
[a PHOSITA], having read the specification, could practice
the invention without undue experimentation.” Storer v.
Clark, 860 F.3d 1340, 1345 (Fed. Cir. 2017) (internal quo-
tation marks and citation omitted); see In re Wright, 999
F.2d 1557, 1561 (Fed. Cir. 1993) (“To be enabling, the spec-
ification of a patent must teach [a PHOSITA] how to make
and use the full scope of the claimed invention without ‘un-
due experimentation.’” (citations omitted)).
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II. Mr. Motupalli Waived Arguments Challenging the
Grounds for Rejection of Each of the Proposed Claims
The Examiner found that the Proposed Claims fail to
comply with the enablement requirement of § 112, ¶ 1, be-
cause they are “replete with limitations that are abstract,
subjective, and not described in the specification.”
J.A. 1596. The PTAB agreed that the disclosure of the
’443 application “falls well short of describing the invention
with the requisite clarity and specificity to enable ordinar-
ily skilled artisans to make or use the claimed invention
without undue experimentation,” J.A. 17, and affirmed the
Examiner’s rejections of the Proposed Claims under § 112,
¶ 1, see J.A. 7–36. Mr. Motupalli contends that the “PTAB
has clearly erred in their Decision” because “the specifica-
tion is fully enabling for those of ordinary skill in the art to
make and/or use the invention without undue experimen-
tation.” Appellant’s Br. 17; see id. at 17–29. We disagree
with Mr. Motupalli.
In the Final Office Action, the Examiner provided
Mr. Motupalli with a non-exhaustive list of grounds for re-
jection of the Proposed Claims under § 112, ¶ 1, identifying
each ground as independently sufficient to support rejec-
tion of each respective claim. See J.A. 1596–610. The
PTAB affirmed each of the Examiner’s grounds for rejec-
tion without exception. See J.A. 7–36. In his opening brief,
Mr. Motupalli intentionally omitted arguments challeng-
ing numerous of the Examiner’s grounds for rejection. See
generally Appellant’s Br. 17–29. See Appellant’s Reply
Br. 4 (admitting to having “limited [the opening brief] to
only those limitations that require attention and further
clarification”). For example, the Examiner identified seven
independently-sufficient grounds for rejection of independ-
ent claims 27, 34, and 40 under § 112, ¶ 1, see J.A. 1597–
98 (providing grounds for rejection of independent
claim 27), 1601–02 (providing grounds for rejection of inde-
pendent claim 34), 1605–07 (providing grounds for rejec-
tion of independent claim 40), but Mr. Motupalli raised
IN RE: MOTUPALLI 5
arguments challenging only three of those grounds, see Ap-
pellant’s Br. 21–25 (raising arguments challenging only
the grounds for rejection of the “black box modernization,”
“grunt factory,” and “ecosystem for integration” limita-
tions). While Mr. Motupalli raises arguments challenging
some of the omitted grounds for rejection in his reply brief,
see Appellant’s Reply Br. 5–16, we have “consistently held
that a party waives an argument not raised in its opening
brief,” Advanced Magnetic Closures, Inc. v. Rome Fastener
Corp., 607 F.3d 817, 833 (Fed. Cir. 2010).
Of the arguments Mr. Motupalli does raise, most are
primarily—if not entirely—incorporated by reference from
the appendix. See Appellant’s Br. 27–29 (incorporating ar-
guments by reference from the appendix). For example, re-
garding claims 29 and 42, Mr. Motupalli relies entirely on
arguments incorporated by reference from the appendix.
See Appellant’s Br. 27 (“Appellant reasserts arguments at
[J.A.] 2779[–]81.”). “Under the Federal Rules of Appellate
Procedure, arguments may not be properly raised by incor-
porating them by reference from the appendix rather than
discussing them in the brief.” Graphic Controls Corp. v.
Utah Med. Prods., Inc., 149 F.3d 1382, 1385 (Fed.
Cir. 1998); see Monsanto Co. v. Scruggs, 459 F.3d 1328,
1335 (Fed. Cir. 2006) (holding that arguments “incorpo-
rate[d] by reference” in a party’s brief are “a violation” of
the Federal Rules of Appellate Procedure). “Therefore,
those arguments are deemed waived.” Monsanto, 459 F.3d
at 1335.
While a pro se appellant’s “fail[ure] to [address] each
ground of rejection expressly” may be excused where the
“reasons for appeal” are sufficiently clear, In re Gaubert,
524 F.2d 1222, 1224 (C.C.P.A. 1975), Mr. Motupalli has
failed to “get the parties and the issues and a sufficient rec-
ord into court in such fashion that the court can deal with
the issues,” In re Castner, 518 F.2d 1234, 1238
(C.C.P.A. 1975); see Groves v. Shinseki, 541 F. App’x 981,
985 (Fed. Cir. 2013) (“[W]hile pro se filings must be read
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liberally, . . . [s]uch filings must still be clear enough to en-
able effective review.”). Accordingly, because Mr. Mo-
tupalli has waived arguments challenging numerous—
and, with respect to several of the Proposed Claims, all—
grounds for rejection of each of the Proposed Claims, we
must affirm the PTAB’s Decision affirming the Examiner’s
rejections of the Proposed Claims under § 112, ¶ 1. See In
re Ball, 81 F.2d 242, 244 (C.C.P.A. 1936) (“[I]nasmuch as
the reasons of appeal do not include all of the grounds of
rejection of the involved claims by the Examiner, . . . the
decision of the Board of Appeals must be affirmed.”). 2
CONCLUSION
We have considered Mr. Motupalli’s remaining argu-
ments and find them unpersuasive. Accordingly, the Deci-
sion of the U.S. Patent and Trademark Office’s Patent Trial
and Appeal Board is
AFFIRMED
2 Because we affirm the PTAB’s Decision with re-
spect to each rejection of the Proposed Claims under § 112,
¶ 1, we need not address rejection of those claims under
§ 112, ¶ 2 or § 101. See In re Marquez, 738 F. App’x 1012,
1016 (Fed. Cir. 2018) (“Because we affirm the [PTAB’s] re-
jection of every claim on appeal for lack of enablement, we
need not address [appellants’] challenges to the [PTAB’s]
other grounds for rejection.”).