Federal Circuit disposition — 24-1745

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: BRET EDWARD CAHILL,
Appellant
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2024-1745
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 16/536,313.
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Decided: January 13, 2025
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BRET CAHILL, Brawley, CA, pro se.
FAHD H. PATEL, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, for appellee
Derrick Brent. Also represented by MONICA BARNES
LATEEF, AMY J. NELSON, FARHEENA YASMEEN RASHEED.
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Before DYK, PROST, and CUNNINGHAM, Circuit Judges.
PER CURIAM.
Bret Cahill appeals pro se from a decision of the United
States Patent Trial and Appeal Board (“Board”). The
Board affirmed the rejection of claims 1–7 of U.S. Patent
Application No. 16/536,313 (“Application”) as indefinite
under 35 U.S.C. § 112(b), anticipated under 35 U.S.C.
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IN RE: CAHILL 2
§§ 102(a)(1)–(a)(2), and/or obvious under 35 U.S.C. § 103.
We affirm.
BACKGROUND
On August 9, 2019, Mr. Cahill filed the Application for
a patent on an apparatus for injecting high viscosity
sealant into a tire puncture. The Application included
seven claims, with claim 1 being the only independent
claim. During prosecution, claim 1 was amended and as
amended recites:
1. An apparatus configured so no part of said
apparatus can penetrate a pneumatic tire with
a means of developing pressure to force sealant
from a vessel for injection of said sealant
directly into a puncture on said tire.
J.A. 58.1 Among other limitations, the dependent claims
recite “said vessel is a hollow cylinder” (claim 2), “said
hollow cylinder contains said sealant” (claim 3), “said
cylinder has a narrow bore to develop high pressure” (claim
4), and “said sealant remains a viscous liquid for a long
time” (claim 6). Id.
In a final rejection, the Examiner rejected claims 1–7
as indefinite. He first noted that the phrase “configured so
no part of said apparatus can penetrate a pneumatic tire”
as used in claim 1 was indefinite because “the capability of
the apparatus relies upon multiple factors including
possible forces applied and relative dimensions including
those of a pneumatic tire e.g. thickness.” J.A. 64. For
claims 4–6, the Examiner explained that the terms
“narrow bore,” “high pressure,” and “long time” as used in
1 In setting forth the claims here, Mr. Cahill
erroneously sets forth the claims as originally filed instead
of the amended claims that are at issue in this appeal. See,
e.g., Appellant’s Op. Br. at i.
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IN RE: CAHILL 3
those claims “are relative terms without distinction” while
“clear ranges and/or approximate values are not discussed
with specificity in the Specification.” J.A. 64–65. He
determined that claims 5 and 6 did not further limit the
claim 1 apparatus as they were “merely directed to a
sealant for use with the apparatus.” J.A. 65. The
Examiner also rejected the claims as anticipated and/or
obvious under §§ 102, 103.
Mr. Cahill appealed the Examiner’s decision to the
Board. The Board determined that Mr. Cahill had
“presented no arguments concerning th[e] [indefiniteness]
rejection” and consequently “summarily affirm[ed]” it. Ex
parte Bret Edward Cahill, No. 2023-003033, 2024 WL
726154, at *2 (P.T.A.B. Feb. 20, 2024) (citing Manual of
Patent Examining Procedure § 1205.02); see also J.A. 4.
The Board also sustained the § 102 and § 103 rejections.
Mr. Cahill appeals. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
We affirm the Board’s decision because Mr. Cahill
forfeited his argument that the claims are not indefinite,
and this ground is sufficient to sustain the Board’s decision.
“While the court retains case-by-case discretion over
whether to apply [forfeiture], we have held that a party
[forfeits] an argument that it failed to present to the
[Board] because it deprives the court of the benefit of the
[Board's] informed judgment.” In re Nuvasive, Inc., 842
F.3d 1376, 1380 (Fed. Cir. 2016) (internal quotation marks
and citations omitted); see also In re Google Tech. Holdings
LLC, 980 F.3d 858, 862–63 (Fed. Cir. 2020). The Examiner
determined, and the Board affirmed, that claim 1 of the
Application, from which claims 2–7 depend, was indefinite.
Mr. Cahill did not contest this rejection in his opening brief
before the Board nor did he contest the separate rejections
of several of the dependent claims for indefiniteness under
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IN RE: CAHILL 4
§ 112(b).2 Instead, his opening brief before the Board was
devoted to challenging the Examiner’s rejections for
anticipation and obviousness.
Mr. Cahill disputes that he did not contest the
indefiniteness rejections before the Board in his opening
brief. In support of this argument, he identifies several
pages of his briefing before the Board that allegedly
address these rejections. Appellant’s Repl. Br. 3
(identifying J.A. 111–14 and J.A. 133–34). His arguments
only address the Examiner’s prior art rejections under
§ 102 and § 103, not § 112(b). The pages are directed to
Mr. Cahill’s allegations that prior art syringes cannot seal
punctures with high viscosity sealant and cannot be made
to work, and that they would be more costly than his
claimed invention. They do not discuss the Examiner’s
rejections of, for example, the claim terms “configured so
no part of said apparatus can penetrate a pneumatic tire”
and “long time,” nor does Mr. Cahill explain how his
briefing before the Board addresses those rejections. See
In re Killian, 45 F.4th 1373, 1386 (Fed. Cir. 2022) (finding
patent applicant forfeited argument “by failing to present
anything more than a conclusory, skeletal argument”).
Mr. Cahill also argues that, in his reply briefing before
the Board, he addressed some of the Examiner’s
indefiniteness rejections by offering “numerical
2 Mr. Cahill now argues that the Examiner is
responsible for Mr. Cahill’s addition of the “configured so
no part of said apparatus can penetrate a pneumatic tire”
limitation that the Examiner later found indefinite and
that the Examiner did not allow him to discuss or further
amend his claims. But Mr. Cahill did not present these
arguments to the Board as a challenge to the Examiner’s
indefiniteness rejections, and they are similarly forfeited.
See In re Google, 980 F.3d at 862–63.
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IN RE: CAHILL 5
limitations,” for certain terms, but both the Examiner and
Board failed to address those numerical limitations. These
arguments, however, were presented to the Board for the
first time in reply, and the Board could properly decline to
consider them. 37 C.F.R. § 41.41(b)(2) (“Any argument
raised in the reply brief [before the Board] which was not
raised in the appeal brief, or is not responsive to an
argument raised in the examiner’s answer . . . will not be
considered by the Board . . . unless good cause is shown.”);
see also id. §§ 41.37(c)(1)(iv), (c)(2).
We have considered Mr. Cahill’s remaining arguments
and find them unpersuasive.
AFFIRMED
COSTS
No costs.
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