891 F.3d 991
Fed. Cir.2018Background
- Inventors Durance, Fu, and Yaghmaee filed U.S. patent application No. 12/682,989 (’989) for a microwave vacuum-drying apparatus and method; key claimed limitation is a "means for rotating the container inside the vacuum chamber so as to tumble the organic material" (the "tumbling limitation").
- The examiner rejected representative claims as obvious over Wefers (vacuum drying with microwaves) in view of Burger (transport/rotation of containers in a vacuum chamber), and also asserted § 112 defects (later withdrawn after interview). The examiner argued rotation inherently causes tumbling.
- Applicants amended and argued that Burger/Wefers do not teach tumbling because Durance’s structure uses motorized gears and internal divider walls (to promote tumbling), unlike gravity-driven rotation in Burger; applicants raised these points in their reply brief in response to the examiner’s answer.
- The Patent Trial and Appeal Board (PTAB) affirmed the obviousness rejection, finding the combination taught the tumbling limitation and stating applicants’ reply-brief arguments were not responsive to the examiner’s answer under 37 C.F.R. § 41.41(b)(2), so those arguments were waived.
- On rehearing applicants argued the Board improperly ignored reply-brief arguments about structural identity and means-plus-function structure; the Board denied rehearing but considered one narrow tumbling-packing argument and otherwise refused to reach reply arguments about divider walls and gears.
- The Federal Circuit vacated and remanded, holding the Board should have considered reply-brief arguments that were responsive to a new structural-identity argument raised for the first time in the examiner’s answer, and directing the Board to address whether divider walls are corresponding structure under § 112 and whether structural-identity rejections can establish obviousness for method claims.
Issues
| Issue | Plaintiff's Argument (Durance) | Defendant's Argument (USPTO) | Held |
|---|---|---|---|
| Whether the PTAB properly refused to consider applicants’ reply-brief arguments responding to a structural-identity argument first articulated in the examiner’s answer | Reply brief responded to a new argument in the examiner’s answer (structural identity); applicants had notice only after the answer and were allowed to respond under § 41.41(b)(2) | Board relied on § 41.41(b)(2) to find waiver; USPTO contends applicants should have petitioned or otherwise treated the answer as a new ground | Vacated and remanded: applicants’ reply-brief arguments were responsive to a new argument in the answer and the Board erred in deeming them waived; Board must consider them in the first instance |
| Whether substantial evidence supports the PTAB’s finding that the combination of Wefers and Burger discloses or inherently produces the tumbling limitation | The combination does not disclose tumbling; Durance’s claims rely on specific structure (motorized gears, divider walls) and tumbling depends on rotation speed and packing — not inherent in Burger/Wefers | Examiner/Board argued rotation inherently causes tumbling and that Burger’s rotation/transport teaches the limitation; also relied on structural identity between references and the claimed structure | Court declined to resolve factual dispute; remanded for PTAB to consider reply arguments and to determine whether the asserted structures in the specification correspond to the claimed means and whether the prior art combination discloses or inherently provides tumbling |
| Whether means-plus-function claim limitation’s corresponding structure (divider walls, gears) was properly considered when comparing to Burger | Durance: divider walls and motorized gears are corresponding structures in the specification and are absent in Burger, so structural identity is lacking | USPTO: argued structural identity or inherency supports rejection | Court: directed PTAB to consider whether divider walls (and other disclosed structure) are corresponding structure under § 112 and assess their presence/absence in prior art before deciding patentability |
| Whether structural-identity type rejections can be applied to method claims | Durance: structural-identity findings cannot establish that a method claim is inherently performed without correct operation (e.g., rotation speed, packing) | USPTO: maintained structural-identity reasoning applies; may attempt to defend inherency on appeal | Court: remanded for PTAB to address whether structural-identity reasoning can establish a prima facie case for method claims and to resolve the factual issues in the first instance |
Key Cases Cited
- Dickinson v. Zurko, 527 U.S. 150 (review of PTO findings follows APA standards)
- ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361 (Fed. Cir.) (standard of review for Board legal and factual determinations)
- In re Gartside, 203 F.3d 1305 (Fed. Cir.) (definition of substantial evidence)
- Eli Lilly & Co. v. Bd. of Regents of Univ. of Wash., 334 F.3d 1264 (Fed. Cir.) (review of Board procedural rulings for abuse of discretion)
- In re Bond, 910 F.2d 831 (Fed. Cir.) (vacatur and remand where Board made no factual finding on structural equivalency)
- Abrutyn v. Giovanniello, 15 F.3d 1048 (Fed. Cir.) (definition of abuse of discretion)
- Consol. Edison Co. of N.Y. v. NLRB, 305 U.S. 197 (definition of substantial evidence)