The Software IP Report

Arguments in Patent Appeal Reply Brief Wrongly Ignored

By Mark St. Amour

Categories: Patent Civil Procedure, The Software IP Report

The Federal Circuit has clarified what arguments may be made in a reply brief during a patent appeal. In In Re: Durance, No. 2017-1486 (Fed. Cir. Jun. 1, 2018), the Federal Circuit vacated the PTAB’s obviousness decision and remanded the case back for reconsideration because the PTAB failed to properly consider arguments made in Applicant’s reply brief.

 At issue was US Patent Application No. 12/682,989. Representative claim 1 on appeal recites:

  1. An apparatus for dehydrating organic material,comprising:

(a) a vacuum chamber having an input end for introduction of a container for the organic material into the vacuum chamber and a discharge end for removal of the container;

(b) a microwave generator;

(c) a microwave-transparent window for transmission of microwave radiation from the microwave generator into the vacuum chamber;

(d) means for reducing pressure inside the vacuum chamber;

(e) means for loading the container into the input end of the vacuum chamber;

(f) means for rotating the container inside the vacuum chamber so as to tumble the organic material in the container;

(g) means for moving the rotating container through the vacuum chamber from the input end to the discharge end thereof; and

(h) means for unloading the container of dehydrated organic material from the vacuum chamber at the discharge end thereof.

In addition to the apparatus of claim 1, the ‘989 application also included a method claim with similar limitations.

During prosecution the ‘989 application was rejected under 35 U.S.C. §103 as being obvious over US Patent No. 6,442,866 in light of U.S. Patent Application Publication No. 2005/0019209. The references taught the use of food receptacles for drying food in a heated vacuum, and rotating a container during a plasma sterilization treatment, respectively.  The Examiner alleged in a Final Rejection that the “means for rotating the container inside the vacuum chamber so as to tumble the organic material in the container” of claim 1 was disclosed by the prior art because organic material in a container “will tumble when the container in is rotation” as “merely an inherent function of all rotating containers.” The Examiner also rejected claim 1 under 35 U.S.C. §112 because the claim language “so as to tumble the organic material in the container” was allegedly not support by the ‘989 Application as originally filed.

Applicant sought further consideration of the Final Rejection under ACFP 2.0, and argued that the rejection was improper because rotation of a container does not teach tumbling materials within the container, and further pointed to portions of the specification that supported the tumbling limitation which described divider walls within the container. The Examiner withdrew the §112 rejection, but maintained the §103 rejection.

Applicant appealed, arguing in an Appeal Brief that the combination of prior art did not inherently teach the tumbling limitation. The Examiner argued in an Answer to the Appeal Brief that there was no structural difference between the claimed apparatus and the combined teachings of the prior art, i.e., that the prior art and the disclosure of the ‘989 application were structurally identical. The Examiner did not designate the structural identity argument as a new ground of rejection.

Applicant then argued in a Reply Brief that the structural identity argument was factually inaccurate. Specifically, the specification of the ‘989 application described the means for rotating the canister as being motorized gears, and that the means for the tumbling limitation was described with the use of the dividers inside the canister. In contrast, the prior art relied on gravity to rotate canisters and was silent with regard to internal dividers. Applicant further argued that the structural identity argument could not be used to reject the method claim.

Ruling on the appeal, the PTAB sided with the Examiner, stating that “given the appropriate selection of rotation speed and material for the inner surface of the container, tumbling would be inherent.” The PTAB disregarded Applicant’s Reply Brief arguments as not being responsive to arguments made in the Answer.

Applicant sought rehearing on the basis of improperly applied inherency doctrine. The PTAB denied rehearing stating that the obvious rejection did not rely on the inherency doctrine and refused to consider Applicant’s arguments regarding the divider walls.

Applicant then turned to the Federal Circuit to appeal the PTAB determination. The Federal Circuit sided with Applicant, and remanded the case to the PTAB to consider the inherency arguments. To support the decision, the Federal Circuit first pointed out the shifting arguments made by the Examiner. Specially, the Examiner cited different Figures throughout her various arguments, and the PTAB failed to identify which Figure was relied upon for upholding the Examiner’s rejection. Further, the Federal Circuit noted the tension between the Examiner and the PTAB rejecting the claims because they were allegedly inherent in the prior art and the PTAB’s assertion that the rejection did not rely on the inherency doctrine. Finally, the Federal Circuit pointed out the Examiner first made an argument regarding structural identity in her Answer to the Appeal Brief, and that Applicant’s unconsidered arguments regarding the dividers in the Reply were in response to such arguments and should have been considered.

In discussing whether the dividers should have been considered in response to the structural identity arguments in Examiner’s Answer, the Federal Circuit noted that the Applicant had no notice of Examiner’s structural identity arguments until the Answer. The Federal Circuit further pointed out that a special designation is not required for new arguments to be considered new grounds of rejection, and that an Applicant may response in their Reply to new arguments first raised in an Answer without showing good cause.

Lessons for Practice

Similar to traditional litigation, prosecuting a case before the Patent Office, and subsequently appealing that case when necessary, should be undertaken with an understanding of an overall theory that takes into account the facts and the law. Here, the Examiner did not have such a theory, resulting in wasted resources of both the Patent Office and the Applicant. The court therefore held that new arguments raised in an Answer during an appeal could be rebutted in a Reply. Patent Attorneys and Agents finding themselves in similar situations are best advised to work with the Examiner to help understand the Examiner’s theory supporting a rejection, and should watch for arguments made for the first time in an Examiner’s Answer for a Reply.