United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: TIMOTHY D. DURANCE, JUN FU, 

PARASTOO YAGHMAEE,

Appellants

______________________ 

2017-1486

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 12/682,989.

______________________ 

Decided: June 1, 2018 

______________________ 

 JONATHAN KENNEDY, McKee, Voorhees & Sease, 

P.L.C., Des Moines, IA, argued for appellants. Also 

represented by KIRK M. HARTUNG, MICHAEL GILCHRIST,

ROBERT SCOTT JOHNSON, CHRISTINE MARIE LEBRONDYKEMAN. 

 MARY L. KELLY, Office of the Solicitor, United States 

Patent and Trademark Office, Alexandria, VA, argued for 

appellee Andrei Iancu. Also represented by NATHAN K.

KELLEY, THOMAS W. KRAUSE, PHILIP J. WARRICK. 

______________________ 

Before LOURIE, REYNA, and CHEN, Circuit Judges.

REYNA, Circuit Judge. 

Timothy D. Durance, Jun Fu, and Parastoo Yaghmaee 

appeal from a decision by the Patent Trial and Appeal 
2 IN RE: DURANCE

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 examiner’s answer, we vacate the Board’s determination of 

obviousness and remand for the Board to consider applicants’ reply-brief arguments in the first instance. 

BACKGROUND

A. The ’989 Application 

On April 14, 2010, inventors Durance, Fu, and Yaghmaee (together, “Durance”) filed Patent Application 

No. 12/682,989 (“’989 application”) with the United States 

Patent and Trademark Office. Durance filed the ’989 

application as part of the national stage of the Patent 

Cooperation Treaty pursuant to 35 U.S.C. § 371. J.A. 663. 

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 

as fruits and berries, by placing the material in a container, 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. 

Independent claim 1 is representative of the apparatus claims and provides: 

1. An apparatus for dehydrating organic material, comprising:

(a) a vacuum chamber having an input 

end for introduction of a container for the 

organic material into the vacuum chamber 

and 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 reducing pressure inside the 

vacuum chamber; 

(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 container through 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 apparatus like that described in claim 1, including a step for 

“rotating the container inside the vacuum chamber so as 

to tumble the organic material in the container.” Id. At 

issue 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:
4 IN RE: DURANCE

J.A. 703. As shown in Figure 4 and described in the ’989 

application’s specification, piston 114 pushes the containers into vacuum chamber 22 from input end 30. J.A. 680. 

Inside the vacuum chamber, the containers are rotated 

about their longitudinal, horizontal axes in rotatable cage 

64 using ring gears 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 that actuate ring gear 66: 
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J.A. 704. The interior of the container shows divider 

walls 146 that “divide the interior space into four segments, 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. Wefers

U.S. Patent No. 6,442,866 (“Wefers”) “relates to a 

method and apparatus for drying or heat-treating substances 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. 51–65; 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 for 
6 IN RE: DURANCE

“sterilizing containers in which a plasma treatment is 

executed through excitation of an electromagnetic oscillation 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 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.” Id. The containers to be sterilized include “ampules, septic glass 

containers, syringes, vials, and other so-called parenteralia packages, or in beverage bottles.” J.A. 881. 

Figure 1 of Burger shows a schematic view of the sterilization 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:
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Id. According to the written description, rotating the 

containers through the vacuum chamber during transportation allows for all regions of the containers to be subjected to plasma “in the same manner.” J.A. 883. 

In addition, Figures 6 and 7 of Burger show the arrangement 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 oriented horizontally in the 

transport direction in such a way that the containers can 
8 IN RE: DURANCE

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 September 24, 2014, the examiner issued a Final 

Office Action rejecting all of Durance’s 37 claims. 

J.A. 144–64. Relevant to this appeal, the examiner rejected 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 tertiary references that recite additional features.2 

J.A. 146. The examiner found that Wefers discloses every 

limitation of representative claim 1 except the tumbling 

limitation. J.A. 147–48. 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 effective 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 Wefers 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, Burger, 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” into a vacuum chamber and subjecting the 

containers to a microwave source. J.A. 148. Next, referencing Figures 6 and 7, the examiner stated that Burger 

teaches a means for rotating the container using “rotatable cage 24” that is “configured to receive the container.” 

J.A. 149. The examiner 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 limitation “for the purpose of balanc[ing] out the microwave 

radiation on the surfaces of the container over the treatment time.” J.A. 149, 151–52. In addition, the examiner 

rejected Durance’s assertion that rotating the container 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 description 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 specification. J.A. 145–46. Specifically, the examiner noted that 

“[n]owhere in the original filed specification does the 

applicant discuss or mention anything about rotational 

speed to enable 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 

amendment 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 consideration was part of 

the “After Final Consideration Pilot Program 2.0,” a 
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The amendment did not modify claim 1 but added language to method claim 16 to require “applying microwave 

radiation to the tumbling organic material 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 withdrawn 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 rejections 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 specification, which states that the divider walls within the container “divide the interior 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 interview with Durance’s attorney. J.A. 123. Following the 

interview, the examiner withdrew her § 112 rejections 

based on Durance’s remarks, which included statements 

about the divider walls’ role in the tumbling of the mate-

 

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 examiner 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-20.
IN RE: DURANCE 11

rials. Id. The examiner, however, maintained her final 

obviousness rejection, stating that “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 

tumbled.” 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 rejected 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 tumbling 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. 

Durance also challenged the examiner’s use of Burger 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 to 
12 IN RE: DURANCE

balance out the microwave radiation 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 answer, 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 application claims and 

Burger’s use gravity to rotate the containers about 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, permitting the container to roll, under the force of 

gravity, into the input chamber 88. The air cylinder 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 longitudinal members 70. The 

container 38 is rotated about its longitudinal axis 

by the rotation of the cylindrical cage 64, tumbling the material in the container as the material 

is being dehydrated. 

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 of 
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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 application clearly relied on gears and not gravity. J.A. 62. 

Specifically, 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 satisfy” the newly added amended limitation providing for 

“moving the rotating container through 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 vacuum 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. 
14 IN RE: DURANCE

the Board found 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 attacked the individual 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 rehearing from the Board. J.A. 51. 

In its rehearing request, Durance averred that the Board 

erroneously ignored its reply-brief arguments on structural identity, which it claims were made in direct response to the examiner’s answer and provided citations. 

J.A. 53–55. Durance contended that 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 motors, gears, and the

divider walls that promote tumbling. J.A. 53. In failing 

to consider these arguments, Durance posited that the 

Board “misapprehend[ed] the law” on inherency “by 

finding that the combination of Wefers and Burger includes the claimed tumbling feature, even though such a 

feature is not necessary, but instead dependent [on the] 

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 ignored its reply-brief 

argument that structural identity cannot be used to show 

that a method claim is inherently performed by a combination 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 its finding of 

obviousness based on the combination of Wefers and 

Burger. J.A. 45 (“As the doctrine of inherency was not 

invoked in the Examiner’s rejection or relied upon in our 

Decision, we cannot have misapprehended the requirements of the doctrine.”). The Board also reiterated 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. However, “in the interest of fairness,” 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 arguments relating 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).

STANDARD OF REVIEW

We review Board decisions in accordance with the 

Administrative Procedure 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, 
16 IN RE: DURANCE

1312 (Fed. Cir. 2000) (quoting Consol. Edison Co. of N.Y. 

v. NLRB, 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 contains no evidence on which the Board could base its decision. 

Abrutyn v. Giovanniello, 15 F.3d 1048, 1050–51 (Fed. Cir. 

1994).

DISCUSSION

Durance raises two arguments on appeal. First, Durance argues that substantial evidence does not support 

the Board’s finding that the combination of Wefers and 

Burger teaches the tumbling limitation either expressly 

or inherently. Second, Durance contends that the Board 

lacks substantial evidentiary 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 continually 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 examiner relied on the embodiments 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 in her summary of a subsequent telephone interview on December 23, 2014, the 

examiner cited to paragraph 54 of Burger, describing the 
IN RE: DURANCE 17

embodiment in Figure 8 of Burger as disclosing the tumbling element of the claimed invention. Then, in her 

answer to the Board, the examiner discussed all four 

figures, but argued for the first time that there was no 

structural difference between the claimed invention and 

Burger Figure 8. The Board, for its part, did not identify 

which Burger embodiment it was relying on in either its 

Decision or its denial of Durance’s request for rehearing. 

And finally, on 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 structure. Appellee’s Br. 9–10. 

The Patent Office’s discussion of inherency also resulted in moving target rejections for Durance to traverse. 

In her Final Office Action, the examiner rejected Durance’s claims by finding tumbling to be “merely an 

inherent function of all rotating containers.” J.A. 161. 

The 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 

Board responded on rehearing that “[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 requirements of the doctrine.” J.A. 45. On

appeal, the Patent Office “[a]ssuming arguendo” that the

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 articulations, 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 basis for 

the tumbling function. 
18 IN RE: DURANCE

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-identity findings cannot be applied 

to the method claims “because even the identical structure would not perform all the steps unless operated in 

the correct manner and used with a partially filled container.” Id. We agree with Durance. 

The Board relied on 37 C.F.R. § 41.41(b) to find waiver. Section 41.41(b)(2) outlines what content cannot be 

included in an applicant’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 particular, 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 
IN RE: DURANCE 19

argument as a “new ground of rejection.”7 To be clear, 37 

C.F.R. § 41.39(a)(1) provides 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 Office 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., not 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 not inherency,

appeared in the examiner’s answer. See J.A. 85. We 

agree with the Patent Office that there need not be talismanic 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 examiner’s answer. 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, Durance had no notice, prior to the examin-

 

7 See § 41.41 (precluding the Board from considering arguments that could have been brought in an applicant’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). 
20 IN RE: DURANCE

er’s answer, of this ground on which his application was 

being rejected.8 

It was therefore proper under § 41.41(b)(2) for Durance 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 rejection, relying on the Patent Office’s Manual of Patent 

Examination Procedure (“MPEP”) § 1207.03. But this 

Court does not read MPEP § 1207.03 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 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. See J.A. 62–64. It was error for the Board to 

find such argument waived. 

The fact that the tumbling limitation is part of a 

means plus function claim also plays a role in our conclusion. Under 35 U.S.C. § 112, ¶ 6,9 a means-plus-function 

 

8 The Patent Office’s Manual of Patent Examination 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 applications “filed on or after” September 16, 2012. See AIA § 

4(e), 125 Stat. at 297. Because the ’989 application was 
IN RE: DURANCE 21

claim is “construed to cover the corresponding structure, 

material, or acts described in the specification and equivalents 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 the 

dehydration process. The basket has a plurality 

of support ribs 147 and a support ring 145. Longitudinally-extending divider walls 146 divide the 

interior space into four segments, to promote the 

tumbling of materials in the bases, as the baskets 

rotate 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 and 86. Furthermore divider walls 146 promote tumbling of the organic material when the container 

is rotated.”). And the Board should therefore have considered it because it affects 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 substantive 

language involved has not changed from the pre-AIA 

version of the statute.
22 IN RE: DURANCE

In this case, the 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, 

since “structural equivalency . . . is a question of fact,”

where the Board made no finding as to structural equivalency, this Court would “not reach that question in the 

first instance” and instead vacate and remand). On 

remand, we direct the Board to consider 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. 

CONCLUSION

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

COSTS

No costs.