United States: Federal Circuit Chastises PTAB Over Moving Target On Ex Parte Appeal

The Federal Circuit decision in In re Durance is a rare precedential decision in an ex parte appeal from a Patent Trial and Appeal Board (PTAB) decision rejecting a pending patent application. The Court took the USPTO to task for making the rejection a moving target throughout the appeal process and failing to consider Reply Brief arguments addressing a new rationale in the Examiner's Answer. This decision highlights how one-sided the ex parte appeals process can be, especially since the applicant here still has to pursue the merits of its case before the USPTO on remand.

The Patent Application At Issue

The patent application at issue was U.S. Patent Application 12/682,989 (assigned to Enwave Corp.), directed to methods and apparatuses for "microwave vacuum-drying of organic materials, such as food products and medicinal plants." The court discussed apparatus claim 1, which includes the following means-plus-function "tumble" limitation at issue on appeal:

means for rotating the container inside the vacuum chamber so as to tumble the organic material in the container

Method claim 16 includes a similar limitation:

rotating the container inside the vacuum chamber so as to tumble the organic material in the container

The Cited Prior Art

The obviousness rejection on appeal was based on two prior art references:

  • U.S. Patent No. 6,442,866 ("Wefers"). As described by the court, "Wefers teaches drying food products, like fruit and berries, by loading 'transport receptacles' containing the food products into a 'treatment chamber' operating at reduced atmospheric pressure, in which the food products are exposed to a heating source, including a microwave source.
  • U.S. Patent Application Pub. No. 2005/0019209 ("Burger"). According to the court, Burger discloses "sterilizing containers in which a plasma treatment is executed" using "excitation of an electromagnetic oscillation so that the plasma is excited in a vacuum in the vicinity of the container regions to be sterilized." Relevant to the rejection, "Burger teaches that the containers to be sterilized are inputted into a chamber 'with a transport apparatus inside it, which produces an essentially rotating motion of the container during the transport from the arrival to the discharge in the chamber.'"

The Moving Target On Ex Parte Appeal

The Federal Circuit decision highlights the following rationales for rejection taken by the USPTO during the ex parte appeal:

  • In the Final Rejection, the examiner referred to Figures 1, 6, and 7 of Burger and asserted that the "tumbling" limitation was met by the combination of Wefers and Burger because "the organic material inside the containers 'will tumble when the container is in rotation' [as taught in Burger] as 'merely an inherent function of all rotating containers.'"
  • In an Advisory Action, the examiner cited Burger's Figure 8 of Burger, which the court described as "show[ing] containers rolling down an inclined plane through the vacuum chamber and rotating around their longitudinal axes."
  • In the Examiner's Answer, the examiner asserted that "there is no structural difference between the claimed invention and the combined teachings of the prior art references." (The examiner did not designate the "structural identity" finding as a new ground of rejection.)
  • Before the Federal Circuit, the USPTO cited Figure 10 of Burger "as the true embodiment that matches Durance's disclosed structure."

In the Reply Brief, Durance pointed out a number of factual errors in the "structural identity" finding, and explained how the structure disclosed in the application differed from that of Burger, including the use of gears to cause the rotation at issue and the presence of dividers within the container to promote tumbling.

The PTAB upheld the examiner's rejection stating,"given the appropriate selection of rotation speed and material for the inner surface of the container, tumbling would be inherent" (emphasis added). The PTAB disregarded Durance's Reply Brief arguments, citing 37 C.F.R. § 41.41(b)(2) and finding they were "not responsive to an argument raised in the [Examiner's] Answer." The PTAB denied Durance's Request for Rehearing, asserting that neither the examiner's rejection nor its decision were based on the "doctrine of inherency," and again refusing to consider Durance's Reply Brief arguments because Durance allegedly had not pointed out "where a new argument requiring such response was raised in the [Examiner's] Answer."

The Federal Circuit Decision

The Federal Circuit decision was authored by Judge Reyna and joined by Judges Lourie and Chen.

The court first took the USPTO to task for making the rejection on appeal a moving target, both with regard to which teachings of Burger were being relied upon and whether the rationale was based on inherency or structural identity:

Throughout this examination, the Patent Office continually shifted its position on which Burger structures and what characteristics of those structures are the bases for the Office's grounds of rejection.

The court found the PTAB's reliance on 37 C.F.R. § 41.41(b) misplaced. That rule provides in relevant part (with emphasis added):

Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive  to an argument raised in the examiner's answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown.

The court agreed that the structural identity rationale was first raised in the Examiner's Answer such that it "was therefore proper under § 41.41(b)(2) for Durance to respond to the structural identity argument" in the Reply Brief.

The court rejected the USPTO's argument that Durance should have petitioned to have the examiner's answer designated as a new ground of rejection:

[Section] 41.41 states that a showing of good cause is only required if the argument is not responsive to an argument raised by the examiner. Here, Durance's reply brief was responsive to the examiner's answer and included citations indicating the new arguments to which Durance was responding. .... It was error for the Board to find such argument waived.

The court therefore vacated the PTAB decision and ordered the PTAB to consider Durance's Reply Brief arguments on remand.

The One-Sided Appeal Process

This case highlights how frustrating and one-sided the ex parte appeal process can be. Even as the Examiner shifted the rationale for rejection, the PTAB refused to consider the applicant's arguments. And, even though the Federal Circuit decision was favorable to the applicant, Durance still has to prevail on the merits on remand. This case also reinforces my practice of requesting an oral hearing in most ex parte appeals. While it's possible the PTAB still would have ignored Durance's arguments, I'd like to believe it would have been harder for the judges to be so dismissive in person.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions