Federal Circuit Chastises PTAB Over Moving Target On Ex Parte Appeal

Author:Ms Courtenay Brinckerhoff
Profession:Foley & Lardner

The Federal Circuit decision in In re Durance is a rare precedential decision in an ex parte appeal from a Patent Trial and Appeal Board (PTAB) decision rejecting a pending patent application. The Court took the USPTO to task for making the rejection a moving target throughout the appeal process and failing to consider Reply Brief arguments addressing a new rationale in the Examiner's Answer. This decision highlights how one-sided the ex parte appeals process can be, especially since the applicant here still has to pursue the merits of its case before the USPTO on remand.

The Patent Application At Issue

The patent application at issue was U.S. Patent Application 12/682,989 (assigned to Enwave Corp.), directed to methods and apparatuses for "microwave vacuum-drying of organic materials, such as food products and medicinal plants." The court discussed apparatus claim 1, which includes the following means-plus-function "tumble" limitation at issue on appeal:

means for rotating the container inside the vacuum chamber so as to tumble the organic material in the container

Method claim 16 includes a similar limitation:

rotating the container inside the vacuum chamber so as to tumble the organic material in the container

The Cited Prior Art

The obviousness rejection on appeal was based on two prior art references:

U.S. Patent No. 6,442,866 ("Wefers"). As described by the court, "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. U.S. Patent Application Pub. No. 2005/0019209 ("Burger"). According to the court, Burger discloses "sterilizing containers in which a plasma treatment is executed" using "excitation of an electromagnetic oscillation so that the plasma is excited in a vacuum in the vicinity of the container regions to be sterilized." Relevant to the rejection, "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.'" The Moving Target On Ex Parte Appeal

The Federal Circuit decision highlights the following rationales for rejection taken by the USPTO during the ex parte appeal:

In the Final Rejection, the examiner...

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