# United States Court of Appeals **for the Federal Circuit**

______________________

IN RE: TIMOTHY D. D URANCE, JUN FU, PARASTOO YAGHMAEE, Appellants

______________________

2017

- 1486

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Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 12/682,989.

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Decided: June 1, 2018

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J ONATHAN K ENNEDY , McKee, Voorhees & Sease, P.L.C., Des Moines, IA, argued for appellants. Also represented by K IRK M. H ARTUNG

, M ICHAEL G ILCHRIST

, R OBERT S COTT J OHNSON

, C HRISTINE M ARIE L EBRON

D YKEMAN

.

M ARY L. K ELLY
, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for appellee Andrei Iancu . Also represented by N ATHAN K.
K ELLEY
, T HOMAS W. K RAUSE

, P HILIP J. W ARRICK

.

______________________

Before L OURIE

, R EYNA

, and C HEN
, Circui t Judges.

R EYNA

, Circuit Judge

. Timothy D. Durance, Jun Fu, and Parastoo Yaghmaee appeal from a decision by the Patent Trial and AppealIN RE : DURANCE 2

Board affirming an examiner’s obviousness rejection of their patent application claims related to a microwave

vacuum

- drying apparatus and method. Because the Board failed to consider arguments in applicants’ reply
brief that were properly made in response to the exami ner’s answer, we vacate the Board’s determination of
obviousness and remand for the Board to consider appl icants’ reply

- brief arguments in the first instance

.
B ACKGROUND

A. The ’989 Application

On April 14, 2010, inventors Durance, Fu, and Y aghmaee (together, “Durance”) filed Patent Application
No. 12/682,989 (“’989 application ” ) with the United States
Patent and Tra demark Office. Durance filed the ’989 application as part of the national stage o f the Patent Cooperation Treaty pursuant to 35 U.S.C. § 371. J.A. 6 63. The ’989 application is directed to improved methods and apparatuses for “microwave vacuum

- drying of organic materials, such as food products and medicinal plants.”
J.A. 673. It describes dehydrating organic material , such

a s fruits and berries, by placing the material in a contai ner, transferring the container to a vacuum chamber, and rotating the container as it moves through the vacuum chamber while applying microwave radiation to the organic material

. J.A. 685.

Indepen dent claim 1 is representative of the app aratus claims and provides :

1. An apparatus for dehydrating organic mater ial, comprising:

(a) a vacuum chamber having an input
end for introduction of a container for the organic material into the vacuum chamber

an d a discharge end for removal of the container;IN RE : DURANCE 3

(b) a microwave generator;

(c) a microwave

- transparent window for
transmission of microwave radiation from the microwave generator into the vacuum chamber;

(d) means for reduc ing pressure inside the

vacuum c hamber;

(e) means for loading the container into the input end of the vacuum chamber;

(f) means for rotating the container inside
the vacuum chamber so as to tumble the organic material in the container ;
(g) means for moving the rotating cont ai ner throu gh the vacuum chamber from the input end to the discharge end thereof;
and

(h) means for unloading the container of dehydrated organic material from the vacuum chamber at the discharge end
thereof.

J.A. 106 (emphasis added)

. Independent claim 16 is representative of the method claims . J.A. 109. It recites a method of dehydrating organic material using an app aratus like that described in claim 1, including a step for “rotating the container inside the vacuum chamber so as to tumble the organic mater ial in the container.” Id. At
is sue in this appeal is the above

- emphasized “means for rotating

. . . so as to tumble” limitation, which we refer to as the “tumbling limitation.”

Figure 4 depicts the claimed apparatus:IN RE : DURANCE 4

J.A. 703. As shown in Figure 4 and described in the ’989 application’s specification, piston 114 push es the contai ners into vacuum chamber 22 from input end 30 . J.A. 680. Inside the vacuum chamber, the container s are rotated
about their longitudinal, horizon tal ax es in rotatable cage

64 using ring gear s 66 and 68, which are engaged by a motorized gear set . J.A. 679.

Figure 5 depicts the interior of the vacuum chamber, including the interior of a container and motorized gear
set 76 and 78 th at actuate ring gear 66 :IN RE : DURANCE 5

J.A. 704. The interior of the cont ainer shows divider
walls 146 that “ divide the interior space into four se gments, to promote the tumbling of the materials in the baskets, as the baskets rotate in the vacuum chamber.”
J.A. 684.

B. Prior Art

1. Wef ers

U.S. Patent No. 6,442,866 (“Wefers”) “relates to a method and apparatus for drying or heat

- treating su bstances or products at a pressure other than atmospheric pressure.” J.A. 847. 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. Id. ; see J.A. 852 col. 2 ll. 51 –6 5; J.A.
853 col. 3 ll. 61

– 66.

2. Burger

U.S. Patent Application Pub. No. 2005/0019209 (“Burger”) is directed to a method and apparatus forIN RE : DURANCE 6

“sterilizing containers in which a plasma treatment is executed through excitation of an electromagnetic oscill atio n so that the plasma is excited in a vacuum in the vicinity of the container regions to be sterilized.”
J.A. 875. Burger teaches that the containers to be ster ilized are inputted into a chamber “with a transport app aratus inside it, which produces an ess entially rotating motion of the container during the transport from the arrival to the discharge in the chamber.” Id. The co ntainers to be sterilized include “ampules, septic glass containers, syringes, vials, and other so

- called parenter alia packages, o r in beverage bottles.” J.A. 881.

Figure 1 of Burger shows a schematic view of the ste rilization device:

J.A. 876. And Figure 2 shows the transportation of the containers on two rollers 10 and 11, which rotate the containers as they move through the device:IN RE : DURANCE 7

Id . According to the written description, rotating the containers through the vacuum chamber during transpo rtation allows for all regions of the containers to be su bjected to plasma “in the same manner .” J.A. 883.

In addition, Figures 6 and 7 of Burger show the a rrangement of a container 2 inside an inclined rotating tube 24, as follows:

J.A. 878 , 884

. In this embodiment, the plasma source is located in the center of the tube, and “[t]he tube is driven
around a rotation axis that is ori ented horizontally in the transport direction in such a way that the containers canIN RE : DURANCE 8

be rotated past the launch region of the plasma source and transported at the same time.” J.A. 882.

C. Proceedings Before the Patent Office

On Septembe r 2 4, 2014, the examiner issued a F inal Office Action rejecting all of Durance’s 37 claims.
J.A. 144

– 64 . Relevant to this appeal, the examiner r ejected claims 1

– 13, 16

– 23, and 26

– 35 as obvious under 35 U.S.C. § 103(a) 1 over Wefers in view of Burger , as well as
other ter tiary references that recite additional features

. 2
J.A. 146. The examiner found that Wefers discloses every limitation of re presentative claim 1 except the tumbling
limitation. J.A. 1 47

– 48. Relying on Figure 1 of Burger,
the examiner found that Burger fills this gap by teaching “a concept of simultaneous rotation and transport of the

1 Congress amended § 103 when it passed the Leahy

- Smith America Invents Act (AIA). Pub. L. No.

112

– 29, § 3(c), 125 Stat. 284, 287 (2011). Because the present application does not contain a claim having an effective filing date on or after March 16, 2013 (the effe ctive date of the statutory changes enacted in 2011), or a
reference under 35 U.S. C. §§ 120, 121, or 365(c) to any patent or application that ever contained such a claim, the pre

- AIA § 103 applies. Id. § 3(n)(1), 125 Stat. at 293

. 2 Specifically, the examiner rejected (1) claims 1

– 6, 12, 16

– 20, 26

– 29, 31, and 33

– 35 as obvious over Wefe rs in view of Burger, (2) claims 7, 9, 10, 21, 30, and 32 over Wefers in view of Burger and U.S. Patent No. 4,169,408 (“Mencacci”), (3) claims 8, 22, and 23 over Wefers in view of Burger and U.S. Patent No. 3,308,332 (“Bibb”), (4) claim 11 over Wefers, Bur ger, Mencacci, and U.S. Patent No. 1,969,101 (“Semon”), and ( 5 ) claim 13 over Wefers in view of Burger and Semon. J.A. 4. The examiner’s and Board’s application of Mencacci, Bibb, and Semon are not at issue in this appeal.IN RE : DURANCE 9

containers” in to a vacuum chamber and subjecting the
containers to a microwave source . J.A. 148. Next, r efe rencing Figures 6 and 7, the examiner stated that Burger teaches a means for rotating the container using “rotat able cage 24” that is “configured to receive the container

. ”
J.A. 149. The examin er thus found it would have been obvious for a person of ordinary skill in the art to modify Wefers in light of Burger to include the tumbling limit ation “for the purpose of balanc[ ing ] out the microwave
radiation on the surfaces of the container over the trea tment time.” J.A. 149 , 15 1– 52

. In addition, the examiner rejected Durance’s assertion that rotating the containe r to enhance tumbling of the organic material is a function not present in the combination of Wefers and Burger, stating that the organic material inside the containers “will tumble when the container is in rotation” as “merely an
inherent function of all rotating containers.” J.A. 161.

The examiner also issued a rejection of claims 1

– 13,
16

– 23, and 26

– 35 for failing to meet the written descri ption requirement and for lack of enablement under 35 U.S.C. § 112

. J.A 145. The examiner found that the
claim language “so as to tumble the organic material in the container” was not supported by the original specific ation. J.A. 145

– 46. Specifically, the examiner noted that “[n]owhere in the original filed specification does the applicant discuss or mention anyt hing about rotational speed to en able such newly added functional limitation. Moreover the original specification does not disclose what causes this newly added limitation to function.” J.A. 146.

Following the Final Office Action, Durance filed an
amendm ent after final rejection pursuant to 37 C.F.R. § 1.116 and a request for further consideration

. 3 J.A. 128.

3 The request for further cons ideration was part of the “After Final Consideration Pilot Program 2.0,” aIN RE : DURANCE 10

The amendment did not modify claim 1 but added la nguage to method claim 16 to require “applying microwave
radiation to the tumbling organic mater ial to dehydrate the organic material .” J.A. 129, 132 . Durance argued
that neither Wefers, Burger, nor the combination of these
two references teach tumbling organic material.
J.A. 138

– 39. Durance contended that the examiner’s rejections should be with drawn because “merely teaching rotation of a container is not sufficient to teach tumbling of any materials within the container.” Id. Durance also argued that the examiner’s § 112 rejection s were improper and pointed to portions of the specification to support the “so as to tumble the organic material in the container” claim language. J.A. 137

– 38. Specifically, Durance pointed to paragraph 36 of the ’989 application’s specific ation, which states that the divider walls within the co ntainer “divide the i nterior space into four segments, to promote the tumbling of the materials in the baskets, as
the baskets rotate in the vacuum chamber.” J.A. 137.

On December 23, 2014, the examiner held an inte rview with Durance’s attorney . J.A. 123. Following the interview, t he examiner withdrew her § 112 rejection s based on Durance’s remarks , which included statements about the divider walls’ role in the tumbling of the mat e-

program aimed to reduce patent pendency “by reducing the number of Requests for Continued Examination (RCE) and encouraging increased collaboration between the applicant and the exa miner to effectively advance the prosecution of the application.” 78 Fed. Reg. 29,117, 29,118 (May 17, 2013). The program is currently set to sunset on September 30, 2018. After Final Consideration Pilot 2.0, United States Patent and Trademark Office, https://www.uspto.gov/patent/initiatives/after

- final

- consid
eration- pilot -2 0.IN RE : DURANCE 11

rials

. Id. The examiner, however, maintained her final
obviousness rejection, stating tha t “because Burger is used by the examiner for the teaching of a transportation means which rotates the container and moves the rotating
container thr[ough] the vacuum chamber from the inlet to the outlet, . . . [ t]he material in the container will be
tumbl ed.” Id. In making this finding, the examiner referenced Figure 8 of Burger, which shows containers rolling down an inclined plane through the vacuum
chamber and rotating around their longitudinal axes , as follows:

J.A. 878, 884

. The examiner thus r ejected Durance’s request for further consideration on the ground that the after final amendment would not overcome the rejections

set out in the Final Office Action. J.A. 124.

Durance appealed to the Board. J.A. 114. Durance argued that neither Burger nor Wefers taught the tu mbling limitation, and that the combination of Wefers and Burger would not rotate the containers such that the tumbling of contents would inherently occur. J.A. 102.
Du rance also challenged the examiner’s use of Bur ger as analogous prior art, arguing that the reference only discusses applying plasma to the surface of containers, and that it “makes no teaching of rotating the cylinders in
order to tumble material within the containers or toIN RE : DURANCE 12

balance out the microwave r adiation applied to contents of the cylinders.” Id. Durance advanced an argument that Wefers teaches away from agitating products during transportation because it stresses “gentle continual transport” to reduce maintenance expenses. J.A. 101.

In her an swer, the examiner countered that “there is
no structural difference between the claimed invention and the combined teachings of the prior art references.”
J.A. 85. Based on this structural identity argument , the examiner found that both the ’989 applica tion claims and Burger ’s use gravity to rotate the containers a bout their longitudinal axes within the vacuum chamber

. Id. The
examiner relied on paragraph 39 of the ’989 application’s specification, which provides:

[0039] The airlock plate 104 is then raised, pe rmitting the container to roll, under the force of gravity, into the input chamber 88 . The air cyli nder 112 is actuated to move the piston 114 into the input chamber, pushing the container through the opening 90 in the end cover 28 and into the rotating cylindrical cage 64 , supported by and sliding along the longi tudinal members 70 . The
container 38 is rotated about its longitudinal axis by the rotation of the cylindrical cage 64 , tu mbling the material in the container as the material is being d ehydrated.

J.A. 685

. 4 The examiner did not designate this structural

- identity finding as a new ground of rejection.

4 Contrary to the examiner’s assertion, this excerpt from the ’989 application’s specification describes using gravity only to place the container in the input chamber ofIN RE : DURANCE 13

Durance 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 ’989 specification was extremely inaccurate: the structure of the ’989 applic ation clearly relied on gears and not gravity. J.A. 62. Spe cifically, Durance argued that the claimed tumbling
limitation used motorized gears to rotate the containers in
the vacuum

. Id. Durance also argued that the divider
walls within the container were internal structures not present in Burger or Wefers that promote the tumbling of the organic material. Id. Durance explained that “[i]n the present invention, unlike in Burger, gravity is not the means for rotating the container” and that “nothing in Burger or Wefers suggests any internal structures to
promote tumbling.” Id. As for method claim 16, Durance argued that a finding of structural identity does not apply to method claims, and therefore is “not sufficient to sati sfy” the newly added amended limitation providing for “moving the rotating container thr ough the vacuum chamber from the input end to a discharge end thereof while applying microwave radiation to the tumbling organic material to dehydrate the organic material.”
J.A. 62

– 63. Durance contended that tumbling depends on the speed of rotation of the container and the amount of packing of organic material inside the container. J.A. 63.

The Board sided with the examiner by affirming the obviousness rejection of claims 1

– 13, 16

– 23, and 26

– 35
based on the combination of Wefers and Burger. 5 First,

the apparatus; it does not describe using gravity to rotate
the containers within the v acuum chamber. See id.

5 The examiner had also rejected claims 14, 15, 24, 25, 36, and 37, which the Board reversed. These claims are not at issue in this appeal. See J.A. 34.IN RE : DURANCE 14

the Board fou nd that the combination of Wefers’s drying of organic material and Burger’s teaching of rotating containers renders obvious the tumbling limitation, stating that Durance’s argument only attack ed the ind ividual references and not the combination. J.A. 31. The
Board then stated that “given the appropriate selection of rotation speed and material for the inner surface of the container, tumbling would be inherent.” Id. In making these findings, however, the Board disregarded 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.” 6 J.A. 33.

Durance sought re hearing from the Board. J.A. 51

. In its rehearing request, Durance averred that the Board erroneously ignored its reply

- brief argument s on stru ctural identit y, which it claims were made in direct r esponse to the examiner’ s answer and provided citations

. J.A. 53

– 55 . Durance contended t hat the Board should
have addressed its arguments that the claimed structure is different than the corresponding structure in Burger with respect to the features of mo tors, gears, and the
divider walls that promote tumbling. J.A. 53. In failing
to consid er these arguments, Durance posited that the Board “misapprehen d [ed] the law” on inherency “ by finding that the combination of Wefers and Burger i ncludes the claimed tumbling feature, even though such a feature is not necessary, but instead dependent [on t he] appropriate selection of rotation speed and material for
the inner surface of the container. ” Id. Durance further

6 Specifically, the Board declined to consider pages

2– 4 of Durance’s five

- page reply brief, which contain all of Durance’s arguments relating to the combination of Wefers and Burger.IN RE : DURANCE 15

argued that the Board improperly ig no red its reply

- brief argument that structural identity cannot be used to show
that a method claim is inherently performed by a comb ination of prior art references. J.A. 55.

The Board denied Durance’s request for rehearing.
J.A. 44

– 48. In the denial, the Board stated that it did not rely on the doctrine of inherency to support i t s finding of
obviousn ess based on the combination o f Wefers and Burger. J.A. 45 (“A s the doctrine of inherency was not invoked in the Examiner’s rejection or relied upon in our Decision, we cannot have misapprehended the requir ements of the doctrine.” ). The Board also reiter ated that it
would not consider Durance’s reply

- brief arguments

, stating that Durance “did not provide such a showing or indicate where a new argument requiring such response was raised in the [examiner’s] Answer.” J.A. 46. Howe ver, “in the interest of f airness,” the Board decided to
consider Durance’s argument in its reply brief that the amount of material packed into the container affects
whether the material would tumble. J.A. 46

– 47. The Board, however, did not consider any of Durance’s arg uments rel ating to the divider walls within the container and their role in the promotion of tumbling.

Durance appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

S TANDARD OF R EVIEW

We review Board decisions in accordance with the
Administrative Proced ure Act (“APA”) , 5 U.S.C. § 706(2) (2012). Dickinson v. Zurko , 527 U.S. 150, 152, 165 (1999). Under the APA, we review the Board’s legal conclusions de novo and its factual findings for substantial evidence. ACCO Brands Corp. v. Fellowes, Inc. , 813 F.3d 1361, 1365 (Fed. Cir. 2016). Substantial evidence is “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” In re Gartside , 203 F.3d 1305,IN RE : DURANCE 16

1312 (Fed. Cir. 2000) (quoting Consol. Edison Co. of N.Y.
v. NL RB , 305 U.S. 197, 229 (1938)).

We review the Board’s application of its procedural
rules for abuse of discretion. Eli Lilly & Co. v . Bd. of Regents of Univ. of Wash. , 334 F.3d 1264, 1266

– 67 (Fed. Cir. 2003). An abuse of discretion occurs if the decision is clearly unreasonable, arbitrary, or fanciful; is based on an erroneous conclusion of law; rests on clearly erroneous fact findings; or involves a record that conta ins no ev idence on which the Board could base its decision. Abrutyn v. Giovanniello , 15 F.3d 1048, 1050

– 51 (Fed. Cir

. 1994).

D ISCUSSION

Durance raises two arguments on appeal . First, D urance argues that substantial evidence does not support
the Board’s f inding that the combination of Wefers and Burger teaches the tumbling limitation either expressly or inherently

. S econd, Duranc e contends that the Board
lacks substantial eviden tiary support for its conclusion that a skilled artisan would modify Wefers to include the rotation feature that Burger discloses. Based on these two alleged factual errors, Durance argues that the Board’s legal conclusion of obviousness is erroneous and requires reversal.

Throughout this examination, the Patent Office co ntinually shifted its position on which Burger structures
and what characteristics of those structures are the bases
for the Office’s grounds of rejection. In her September 24, 2014 Final Rejection , the e xaminer relied on the embod iments in Figures 1, 6

, and 7 of Burger as teaching “a concept of simultaneous rotation and transport of the containers” and a means for rotating the container using “rotatable cage 24” that is “configured to receive the
container.” J.A. 151. But i n her summary of a subs equent telephone interview on December 23, 2014 , the

e xaminer cited to paragraph 54 of Burger, describing theIN RE : DURANCE 17

embodiment in Figure 8 of Burger as disclosing the tu mbling element of the claimed invention

. Then, in her

an swer to the Board, the e xaminer discussed all four
f igures , but argued for the first time that there was no
structural difference between the claimed invention and Burger Figure 8

. T he Board , for its part, did not identify which Burger embodiment it was relying on in either its
Decision or its denial of Du rance’s request for rehearing. And finally, o n appeal to this court , the Patent Office relies on yet another figure from Burger, Figure 10, as the
true embodiment that matches Durance’s disclosed stru cture. Appellee’s Br. 9

– 10.

T he Patent Office ’s discussion of inherency also result ed in moving target rejections for Durance to traverse

. In her Final Office Action , the e xaminer rejected D urance’s claims by finding tumbling to be “merely an inherent function of all rotating containers.” J.A. 161.
T he Board similarly found that

, “given the appropriate selection of rotation speed and material for the inner surface of the container, tumbling would be inherent.” J.A. 31. And when Durance challenged this statement as an improper application of the inherency doctrine, the
Bo ard responded on rehearing that “[a]s the doctrine of
in herency was not invoked in the e xaminer’s rejection or relied upon in our Decision, we cannot have misappr ehended the requirements of the doctrine.” J.A. 45. On

ap peal, the Pat ent Office “[a]ssuming arguendo ” that t he
Board’s rejection was based on inherency, now makes a
case for this court to find inherency in the first instance

. Appellee’s Br. 25

– 27.

Under these circumstances of multiple shifting artic ulations, this Court is not confident in the Patent Office’s reasoning for its rejection of the Application, specifically as to which embodiment of Burger the Board relied on,
and whether the Board relied on inherency as a ba sis for the tumbling function.IN RE : DURANCE 18

The examiner and Board’s shifting reliance on Burger
and on inherency obfuscated the issues before Durance, particularly regarding the issue of structural identity. As error, Durance points to the Board’s failure to consider arguments in Durance’s reply brief made in response to the examiner’s answer. Appellants’ Br. 24. Specifically, Durance argues that the Board should have considered its arguments that claim 1 of the ’989 application “included the tumbling feature in means

- plus

- function language
that was directed to structure different than the structure
of Burger .” Id. Durance also argues that the examiner’s
and Board’s structural

- ident ity findings cannot be applied
to the method claims “because even the identical stru cture would not perform all th e steps unless operated in the correct manner and used with a partially filled co ntainer.” Id. We agree with Durance.

The Board relied on 37 C.F.R. § 41.41 (b) to find wai ver. Section 41.41(b)(2) outlines what content cannot be
in cluded in an appli cant’ s reply brief . It provides in relevant part:

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.

Section 41.41 (b)(2) permits a reply brief to respond to “an argument raised in the examiner’s answer.” In partic ular, nothing in t his provision bars a reply brief from
address ing new arguments raised in the examiner’s

ans wer that are not articulated in the Final Office Action

, regardless of whether the examiner designated that newIN RE : DURANCE 19

argument as a “new ground of rejection .” 7 To be clear, 37 C.F.R. § 41.39(a)(1) provide s that “[a]n examiner’s answer is deemed to incorporate all of the grounds of rejection set forth in the Office action from which the appeal is taken.” Since the examiner’s answer is deemed to incorporate all grounds in the Final Offi ce Action, an applicant ’s reply may not respond to grounds or arguments raised in the examiner’s answer if they were part of the Final Office
Action and the applicant did not address them in the
initial appeal brief. If an examiner’s answer includes arguments raised for the first time

, i.e., n ot in the Final Office Action, an applicant may address those arguments in the reply

. 37 C .F.R. §§ 41.39

, 41.41

. Here, the examiner’s first clear representation that she was relying on structural identity , and n ot inherency, appeared in the e xaminer’ s a nswer. See J.A. 85. We agree with the Patent Office that there need not be tali sman ic words to indicate a ground of rejection. Appellee’s
Br. 28

– 29. But in this case, there is no mention of structural identity with Figure 8 of Burger before the e xami ner’ s a nswer. And the equivocal nature of the examiner’s and Board’s remarks throughout the examination of the ’989 application, including whether inherency was the basis for the rejection, clouded the issues before Durance. Accordingly, Du rance had no notice

, prior to the exami n-

7 See § 41.41 ( preclud ing the Board from considering arguments that could have been brought in an appl icant’s appeal brief, including arguments responding to grounds of rejection present in the prosecution history before the filing of the appeal brief, unless good cause is
shown ).IN RE : DURANCE 20

er’s answer

, of th is ground on which his application was being rejected. 8

It was therefore proper under § 41.41(b)(2) for D urance to respond to the structural identity argument raised in the examiner’s answer. The Patent Office contends that Durance should have petitioned to have the examiner’s answer designated as a new ground of reje ction, relying on the Patent Office’s Manual of Patent Examination Procedure (“MPEP”) § 1207. 0 3. But this
Court does not read MPEP § 1207. 0 3 or 37 C.F.R. § 41.41 to put such a burden on applicants. Neither contemplates that the applicant has to petition to have a new argument in an answer designated as a new ground of rejection before it can respond to the new argument. Rather, § 41.41 states that a showing of good cause is only r equired 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 cit ati ons indicating the new arguments to which Durance was responding. See J.A. 62

– 64. I t was error for the Board t o find such argument waived.

The fact that the tumbling limitation is part of a means plus function claim also plays a role in our concl usion

. Under 35 U.S.C. § 112, ¶ 6

, 9 a means

- plus

- function

8 T he Patent Office’s Manual of Patent Examin ation Procedure , at § 1207.03(a)(I)(4), provides that citing a new structure as support of structural obviousness is considered a new ground of rejection.

9 Congress amended § 112 when it enacted the Leahy

- Smith America Invents Act (“AIA”). Pub. L. No.

112

- 29, § 4(c), 125 Stat. 284, 296 (2011). However, the
amended version of § 112 applies only to patent applic ations “filed on or after” September 16, 2012. See AIA § 4(e), 125 Stat. at 297. Because the ’989 application wasIN RE : DURANCE 21

claim is “construed to cover the corresponding structure, material, or acts described in the specification and equiv alents thereof.” Durance argues that the divider walls in the containers are required structures of the containers for the tumbling limitation , making the ’989 application dissimilar from Burger. For support, Durance cites paragraph 35 of the ’989 application’s written description

, which states:

[ 0035 ] The container 38 is a basket made of high density polyethylene, with a cylindrical side wall
138 , a closed bottom wall 140 and a removable lid

142 . The side wall, bottom wall and lid are perforated by a plurality of holes 144 for the escape of water vapor from the organic material during th e dehydration process. The basket has a plurality of support ribs 147 and a support ring 145 . Lo ngitudinally

- extending divider walls 146 divide the interior space into four segments, to promote the tumbling of materials in the bases, as the baskets

rotat e in the vacuum chamber.

J.A. 684. This structural dissimilarity argument by Durance, advanced in response to the examiner’s answer,

was fair game for the Board to consider under § 41.41. J.A. 62 (“The means includes gears 76 and 78 driven by

motors 84 a nd 86. Furthermore divider walls 146 pr omote tumbling of the organic material when the container is rotated.”). And the Board should therefore have co nsidered it because it affect s whether the combination of Wefers and Burger discloses the tumbling limitation

.

filed before that date, on April 14, 2010, pre

- AIA § 112 applies here. We note, however, that the subst antive language involved has not changed from the pre

- AIA
version of the statute.IN RE : DURANCE 22

In this case, t he Board’s failure to review Durance’s reply

- brief arguments requires that we vacate the Board’s
decision and remand this matter to the Board. See In re
Bond , 910 F.2d 831, 833

– 34 (Fed. Cir. 1990) (finding that

,
s ince “structural equivalency . . . is a question of fact,” where the Board made no finding as to structural equiv alency, this Court would “not reach that question in the
first instance ” and instead vacat e and remand ). On
remand

, we direct the Board to con sider the arguments made in Durance’s reply brief on: (1 ) whether the divider
walls in the containers are a part of the claimed structure
of the tumbling limitation under § 112 ; and ( 2 ) whether a
structural identity rejection can be used to find a prima
facie case of obviousness for method claims. Only after
consideration of these arguments can the Board determine the patentability of the ’989 application.

C ONCLUSION
The purpose of § 41.41 is not to prevent an applicant
from responding to new arguments raised for the first
time in the examiner’s answer. Because the Board should
have considered the inherency

- related arguments in
Durance’s reply brief , we vacate and remand for the Board to consider those arguments in the first instance.

VACATED AND REMANDED

C OSTS

No costs.