In re: Timothy D. Durance, et al.

Docket No. 2017-1486

June 1, 2018

Brief summary: PTAB affirmance of examiner’s obviousness rejection vacated and remanded due to the examiner’s and PTAB’s “multiple shifting articulations” of the rejections.

Summary: Mr. Durance et al. appealed PTAB decision affirming the examiner’s rejection of their claims of Ser. No. 12/682,989 directed to a microwave vacuum-drying apparatus for e.g., fruits and berries, and methods relating to the same. The limitation-at-issue in this appeal is “means for rotating the container inside the vacuum chamber so as to tumble the organic material in the container” and related method. The claims were rejected in view of “Wefers” (US 6,442,866) and “Burger” (US Pat. Pub. 2005/0019209) “as well as other tertiary references that recite additional features.” The examiner alleged that “Wefers discloses every limitation of representative claim 1 except the tumbling limitation” but that Burger’s Figure 1 “fills this gap by teaching ‘a concept of simultaneous rotation and transport of the containers’ into a vacuum chamber and subjecting the containers to a microwave source.” After being finally rejected for obviousness, Durance argued to the PTAB that “neither Berger nor Weferrs taught the tumbling limitation”, that it would not “inherently occur”, and that Burger was not analogous art. “[T]he examiner countered that ‘there is no structural difference between the claimed invention and the combined teachings of the prior art references” (which the FC panel characterized as a “structural identity finding…not designate[d]…as a new ground of rejection”). Durnace challenged this argument in their reply brief arguing that “unlike in Berger, gravity is not the means for rotating the container” and “that a finding of structural identity does not apply to method claims”. The PTAB affirmed the examiner’s rejection and, the FC panel explained, “disregarded Durance’s reply-brief arguments by citing 37 C.F.R. § 41.41(b)(2) and stating that these arguments were ‘not responsive to an argument raised in the Answer.’” In their request for rehearing, Durance argued the PTAB “should have addressed its arguments tha the claim structure is different” and that it “improperly ignored its reply-brief argument” regarding the method claims. The FC panel reviewed the PTAB’s to determine if it was “clearly unreasonable, arbitrary, or fanciful”, “based on an erroneous conclusion of law”, “rests on clearly erroneous fact findings”, or unsupported by evidence (Eli Lilly, FC 2003; Abrutyn, FC 1994). The FC panel explained that “[t]hroughout this examination, the Patent Office continually shifted its position on which Burger structures…are the bases for the…grounds of rejection” and its “discussion of inherency…resulted in moving target rejections”. The FC panel wrote that “[u]nder these circumstances of multiple shifting articulations,” it “is not confident in the Patent Office’s reasoning for its rejection”. The FC panel found that “nothing in” section 41.41(b)(2) (which “outlines what cannot be included in an applicant’s reply brief”) “bars a reply brief from addressing new arguments raised in the examiner’s answer that are not articulated in the Final Office Action, regardless of whether the examiner designated that new argument as a ‘new ground of rejection’” (and Durance was not required to petition this point). Thus, the FC panel vacated and remanded the PTAB’s decision.

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