Grüneberg and Myers - Intellectual Property Law

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Arguments in Reply Brief Are Not Limited to Designated New Grounds of Rejection

The Fed. Cir. (In re Durance) vacated the decision of the Board and remanded based on the Board’s failure to review appellant’s reply-brief arguments.  In asserting the obviousness of the claimed apparatus for dehydrating organic material, the examiner relied on three different aspects of the primary reference in the final rejection, in the examiner interview summary and in the examiner’s answer.  In the examiner’s answer, for the first time, the examiner argued that there was no structural difference between the claimed invention and the combined teachings of the prior art references citing a structural identity argument.  Appellant’s challenge to the structural-identity rejection in their reply brief was not considered by the Board, citing waiver under 37 CFR 41.41(b).  The Fed. Cir. found appellant’s response in their reply brief to be a proper response to the issue first raised in the examiner’s answer, despite the issue not being designated as a new ground of rejection and thus error by the Board’s failure to review appellant’s argument.  A reminder to address all issues in your appeal brief as your reply brief should be limited to new grounds of rejection and issues addressed in the initial appeal brief.

Richard Chinn