In Re: Durance

June 04, 2018
Post by Blog Staff

In In Re: Durance, the United States Court of Appeals for the Federal Circuit (“CAFC”) vacated the Patent Trial and Appeal Board’s (“PTAB”) ruling affirming an examiner’s obviousness rejection of a patent application related to a microwave vacuum-drying apparatus and method. The CAFC remanded for consideration of the applicants’ reply-brief arguments because they were properly made in response to the examiner’s answer.

The examiner raised a never-before articulated ground of rejection in her answer to the applicants’ appeal to the PTAB. The PTAB affirmed the obviousness rejection, disregarding the reply-brief arguments by citing 37 C.F.R. § 41.41(b)(2) and by stating that those arguments were “not responsive to an argument raised in the answer.” The applicants sought rehearing averring that the PTAB improperly ignored its reply-brief arguments. The PTAB denied the request for rehearing.

Upon appeal, the CAFC found that the examiner continually shifted her position regarding the grounds for rejection, and additionally raised a new argument in her answer to the PTAB. Because of these shifting articulations, the CAFC was not confident in the reasoning for rejecting this patent application. Moreover, the CAFC found the PTAB erroneously failed to consider arguments in the applicants’ reply brief, and the PTAB improperly relied on 37 C.F.R. § 41.41(b) to find waiver. Section 41.41(b)(2) permits a reply brief to respond to “an argument raised in the examiner’s answer.” Further, nothing in this provision prohibits a reply brief from addressing new grounds for rejection raised in an examiner’s answer that are not articulated in a Final Office Action, regardless of whether or not the examiner designated that new argument as such. Seeing that the applicants had no notice of this new ground for rejection prior to the answer, it was therefore considered proper under § 41.41(b)(2) for the applicants to respond to the argument in a reply brief.

The CAFC found the purpose of § 41.41 is not to prevent an applicant from responding to new arguments raised for the first time in the examiner’s answer, and the PTAB should have considered the responsive arguments in the applicants’ reply brief.

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