CAFC Vacates Board for Moving Target Rejections, Failure to Consider Reply Brief

The moving target rejections were largely due to the fact that the examiner’s first clear explanation that she was relying on structural identity, and not inherency, appeared in the examiner’s answer.

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Timothy D. Durance, Jun Fu, and Parastoo Yaghmaee appealed from a decision by the Patent Trial and Appeal Board (Board) affirming the examiner’s rejection of their patent application claims as being obvious. The claims in question related to a microwave vacuum-drying apparatus and method. Because the The Federal Circuit, in a decision authored by Judge Reyna, found that the Board failed to consider arguments in applicants’ reply brief that were properly made in response to the examiner’s answer. As a result, the Federal Circuit vacated the Board’s determination of obviousness and remanded for the Board to consider applicants’ reply-brief arguments in the first instance. See In re Durance, No. 2017-1486, 2018 (Fed. Cir. June 1, 2018) (Before Lourie, Reyna, and Chen, J.) (Opinion for the court, Reyna, J.).

The Durance Application is directed to “microwave vacuum-drying of organic materials” and relied heavily on means-plus-function claim language. The Examiner found that all elements of a representative claim were anticipated by the primary reference, except for the “tumbling means” (“means for rotating the container inside the vacuum chamber so as to tumble the organic material in the container”).

The PTO found that the tumbling means was disclosed by a secondary reference, but was unclear about which embodiment was being used. Different figures were cited during examination, on review by the Board, and on appeal before the Court. Further, the “Patent Office’s discussion of inherency also resulted in moving target rejections” because, while the Examiner and the Board appeared to rely on inherent disclosure of the tumbling means by the secondary reference, the Board denied reliance on inherency when responding on rehearing.

The Federal Circuit explained concern regarding the shifting articulations by the PTO through the examination, which ultimately lead the Board to not consider arguments made by the Applicant in the reply brief. Judge Reyna wrote:

Under these circumstances of multiple shifting articulations, this Court is not confident in the Patent Office’s reasoning for its rejection of the Application, specifically as to which embodiment of Burger the Board relied on, and whether the Board relied on inherency as a basis for the tumbling function.

The examiner and Board’s shifting reliance on Burger and on inherency obfuscated the issues before Durance, particularly regarding the issue of structural identity. As error, Durance points to the Board’s failure to consider arguments in Durance’s reply brief made in response to the examiner’s answer.

The moving target rejections were largely due to the fact that the examiner’s first clear explanation that she was relying on structural identity, and not inherency, appeared in the examiner’s answer.  Judge Reyna explained:

[T]he equivocal nature of the examiner’s and Board’s remarks throughout the examination of the ‘989 application, including whether inherency was the basis for the rejection, clouded the issues before Durance. Accordingly, Durance had no notice, prior to the examiner’s answer, of this ground on which his application was being rejected.

The Court ultimately agreed with the Applicant that the Board should have considered its arguments that, inter alia, the tumbling means was directed to a specific structure, unique from that of the secondary reference. The Court rejected the Board’s contention that the Applicant waived those arguments because the Applicant is entitled to respond to “an argument raised in the examiner’s answer.” 37 C.F.R. § 41.41.

Take Away

Before the Board, Applicants have a right to respond to new arguments raised by the examiner’s answer under 37 C.F.R. § 41.41.



The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Gene Quinn

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Gene Quinn

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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Discuss this

There are currently 2 Comments comments.

  1. AAA JJ June 10, 2018 1:09 pm

    Totally expected behavior from lifer APJ

  2. Eric Berend June 13, 2018 12:23 am

    Well, it does seem much of the whole gaming of the system by large entity IP pirates since before the 2011 passage of the AIA, is deliberately designed to induce the uncertainty of a ‘moving target’, for practices and proceedings that are supposed to provide legal surety.