During the patent appeal process conducted by the Patent Trial and Appeal Board (PTAB), the PTAB must consider the applicant’s response to newly raised arguments first presented in the examiner’s answer.

Patent applicants Durance, Fu, and Yaghmaee (collectively, “Durance”) filed a patent application for improved methods and apparatuses for microwave vacuum-drying of organic materials like fruits and berries (Patent Application No. 12/682,989). During examination of the application, the examiner issued a final rejection, rejecting certain claims as obvious in light of several references. In response to the final rejection, Durance added a claim amendment that specified “tumbling organic material” to distinguish the application over the references and requested that the examiner withdraw her rejections. Slip op. at 10. Despite the claim amendment, the examiner maintained the obviousness rejection. Durance appealed this decision to the PTAB. During the appeal, the examiner, in her answer, provided a new ground of rejection based on the alleged lack of structural differences between the claimed invention and the prior art. The examiner wrote, “[t]here is no structural difference between the claimed invention and the combined teachings of the prior art references,” slip op. at 12, equating the use of gravity to rotate the containers in a prior art reference to the tumbling of the application.

Durance argued against the examiner’s structural identity argument in his reply brief, pointing out that the tumbling in his application required the use of motorized gears, not gravity, and that the application contained divider walls to enhance the tumbling of the organic matter, walls which were not present in the prior art references. Relying on 37 C.F.R. §41.41(b)(2), the PTAB disregarded Durance’s argument as “not responsive to an argument raised in the Answer” and affirmed the examiner’s obviousness rejection. Slip op. at 14.

Durance requested a rehearing, but the PTAB denied it. On appeal, the Federal Circuit analyzed 37 C.F.R. §41.41(b)(2), which addresses content of an applicant’s reply brief that will not be considered without good cause, that the PTAB relied on in disregarding Durance’s argument on structural differences. The Federal Circuit found that 37 C.F.R. §41.41(b)(2) does not bar the applicant from addressing arguments that the examiner first raises in their answer. Further, the applicant is not required to petition for a new ground of rejection if the examiner introduces a new argument in their answer, as the PTAB argued.

The Federal Circuit determined that the PTAB “failed to consider arguments in applicant’s reply brief that were properly made in response to the examiner’s answer.” Slip op. at 2. The Federal Circuit vacated the Board’s obviousness determination and remanded the case to the PTAB, ordering them to consider the arguments in the reply brief. Id.

What This Means for You

Applicants with patent applications under appeal should carefully review the reasoning behind an examiner’s answer. If the examiner introduces an argument that has never before been raised during the prosecution of the application, the applicant has the right to rebut the argument and have the PTAB address merits of the new argument in its final decision.