In In re Durance, [2017-1486] (June 1, 2018), the Federal Circuit vacated the Board’s determination of obviousness and remand for the Board to consider applicants’
reply-brief arguments in the first instance.

Durance, Fu, and Yaghmaee filed a patent application on improved methods and
apparatuses for “microwave vacuum-drying of organic materials, such as food products and medicinal plants.  Applicants appealed a final rejection of the claims, and in her Answer, the Examiner raised a new structural identify argument to counter applicant’s argument against the rejection.  Applicants challenged the examiner’s structural-identity
rejection in its reply brief. Durance explained that the Examiner’s never-before articulated understanding of the corresponding structure from the specification was
extremely inaccurate.   The Board affirmed the rejection, disregarding 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.”  The Board denied rehearing, reiterating that it would not consider applicant’s reply-brief arguments, because applicants did not provide such a showing or indicate where a new argument requiring such a response was raised in the Examiner’s Answer.

The Federal Circuit noted that throughout the examination, the Patent Office continually
shifted its position on which structures and what characteristics of those structures are the bases for the Office’s grounds of rejection, such that the Court was “not confident” in the reasoning for the rejection.  As to the failure to consider arguments in applicants’ reply brief, the Federal Circuit noted that Section 41.41(b)(2) permits a reply brief to respond to “an argument raised in the examiner’s answer.” The Federal Circuit added that nothing in this provision 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.  The Federal Circuit said:

If an examiner’s answer includes arguments raised for the first time, i.e., not in the Final Office Action, an applicant may address those arguments in the reply.

The Federal Circuit said that the equivocal nature of the examiner’s and Board’s remarks throughout the examination of the application, including whether inherency was the basis for the rejection, clouded the issues before applicants.  Accordingly, applicants had no notice, prior to the examiner’s answer, of the grounds on which his application was being rejected, and it was therefore proper under § 41.41(b)(2) for applicants to
to respond to the argument raised in the examiner’s answer.  The Federal Circuit rejected the Patent Office’s argument that applicant should have petitioned to have the
examiner’s answer designated as a new ground of rejection, finding no such requirement in the regulations.