Editor: Paul Stewart

Federal Circuit Summaries

Before Lourie, Reyna, and Chen.  Appeal from the Patent Trial and Appeal Board (“PTAB”).

Summary: Nothing in § 41.41(b)(2) 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 the new argument as a new ground of rejection.

Timothy D. Durance, Jun Fu, and Parastoo Yaghmaee (“Applicant”) appeal a decision from the PTAB affirming an examiner’s obviousness rejection.  The examiner issued a final office action rejecting all of Applicant’s claims as obvious in view of the cited references.  On appeal to the PTAB the examiner advanced new arguments in support of the rejection, but did not designate these arguments as new grounds of rejection.  In its reply brief Applicant rebutted these new arguments, but the PTAB disregarded them, stating the arguments were “not responsive to an argument raised in the Answer.”  Applicant requested a rehearing, averring that the arguments in its reply brief were improperly ignored.  The PTAB denied the request for rehearing.

The Federal Circuit vacated the PTAB’s decision and remanded for consideration of the arguments advanced in Applicant’s reply brief.  The Court found that if an examiner’s answer includes arguments raised for the first time, an applicant may address those arguments in the reply.  Here, Applicant’s reply brief was responsive to the examiner’s answer and included citations indicating the new arguments they were replying to. Therefore, the Federal Circuit found it was an error for the PTAB to disregard these arguments.

This case is: IN RE: DURANCE