{"id":2083,"date":"2018-06-01T16:08:48","date_gmt":"2018-06-01T20:08:48","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2083"},"modified":"2018-07-02T22:39:48","modified_gmt":"2018-07-03T02:39:48","slug":"board-must-consider-applicants-reply-to-new-grounds-in-the-examiners-answer","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2083","title":{"rendered":"Board Must Consider Applicant’s Reply to New Grounds in the Examiner’s Answer"},"content":{"rendered":"

In In re Durance<\/a>, [2017-1486] (June 1, 2018), the Federal Circuit\u00a0vacated the Board\u2019s determination of\u00a0obviousness and remand for the Board to consider applicants\u2019
\nreply-brief arguments in the first instance.<\/p>\n

Durance, Fu, and Yaghmaee filed a patent application on\u00a0improved methods and
\napparatuses for \u201cmicrowave vacuum-drying of organic\u00a0materials, such as food products and medicinal plants.\u00a0 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.\u00a0 Applicants\u00a0challenged the examiner\u2019s structural-identity
\nrejection in its reply brief. Durance explained that the\u00a0Examiner\u2019s never-before articulated understanding of the\u00a0corresponding structure from the specification was
\nextremely inaccurate.\u00a0 \u00a0The Board affirmed the rejection,\u00a0disregarding Durance\u2019s
\nreply-brief arguments by citing 37 C.F.R. \u00a7 41.41(b)(2)\u00a0and stating that these arguments were \u201cnot responsive to\u00a0an argument raised in the Answer.\u201d\u00a0 The Board denied rehearing,\u00a0reiterating that it\u00a0would not consider applicant’s reply-brief arguments, because applicants\u00a0did not provide such a showing or\u00a0indicate where a new argument requiring such a response\u00a0was raised in the Examiner\u2019s Answer.<\/p>\n

The Federal Circuit noted that\u00a0throughout the examination, the Patent Office continually
\nshifted its position on which structures\u00a0and what characteristics of those structures are the bases\u00a0for the Office\u2019s grounds of rejection, such that the Court was “not confident” in the reasoning for the rejection.\u00a0 As to the failure to consider arguments in applicants’ reply brief, the Federal Circuit noted that\u00a0Section 41.41(b)(2) permits a reply brief to respond to \u201can\u00a0argument raised in the examiner\u2019s answer.\u201d The Federal Circuit added that\u00a0nothing in this provision bars a reply brief from\u00a0addressing new arguments raised in the Examiner\u2019s Answer that are not articulated in the Final Office Action,\u00a0regardless of whether the examiner designated that new argument as a \u201cnew ground of rejection.\u00a0 The Federal Circuit said:<\/p>\n

If an examiner\u2019s answer includes\u00a0arguments raised for the first time, i.e., not in the Final\u00a0Office Action, an applicant may address those arguments\u00a0in the reply.<\/p><\/blockquote>\n

The Federal Circuit said that the equivocal nature of the examiner\u2019s\u00a0and Board\u2019s remarks throughout the examination of the\u00a0application, including whether inherency was the basis for the rejection, clouded the issues before applicants.\u00a0 Accordingly, applicants had no notice, prior to the examiner’s answer, of the grounds on which his application was\u00a0being rejected, and it was\u00a0therefore proper under \u00a7 41.41(b)(2) for applicants to
\nto respond to the argument\u00a0raised in the examiner\u2019s answer.\u00a0 The Federal Circuit rejected the Patent Office’s argument that applicant should have petitioned to\u00a0have the
\nexaminer\u2019s answer designated as a new ground of rejection, finding no such requirement in the regulations.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In In re Durance, [2017-1486] (June 1, 2018), the Federal Circuit\u00a0vacated the Board\u2019s determination of\u00a0obviousness and remand for the Board to consider applicants\u2019 reply-brief arguments in the first instance. Durance, Fu, and Yaghmaee filed a patent application on\u00a0improved methods and … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[61],"tags":[],"class_list":["post-2083","post","type-post","status-publish","format-standard","hentry","category-appeal"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2083","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2083"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2083\/revisions"}],"predecessor-version":[{"id":2085,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2083\/revisions\/2085"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2083"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2083"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2083"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}