Federal Circuit disposition — 17-1486

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
______________________
J ONATHAN K ENNEDY , McKee, Voorhees & Sease,
P.L.C., Des Moines, IA, argued for appellants. Also
represented by K IRK M. HARTUNG, MICHAEL G ILCHRIST ,
ROBERT SCOTT J OHNSON, CHRISTINE M ARIE L EBRON-
D YKEMAN.
MARY 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. WARRICK.
______________________
Before L OURIE, 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

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IN 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 examin-
er’s answer, we vacate the Board’s determination of
obviousness and remand for the Board to consider appli-
cants’ reply-brief arguments in the first instance.
BACKGROUND
A. The ’989 Application
On April 14, 2010, inventors Durance, Fu, and Ya-
ghmaee (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 contain-
er, 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 appa-
ratus claims and provides:
1. An apparatus for dehydrating organic materi-
al, 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;

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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 contain-
er 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 appa-
ratus 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:

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IN RE: DURANCE 4
J.A. 703. As shown in Figure 4 and described in the ’989
application’s specification, piston 114 pushes the contain-
ers 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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IN RE: DURANCE 5
J.A. 704. The interior of the container shows divider
walls 146 that “divide the interior space into four seg-
ments, 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 sub-
stances 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

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IN RE: DURANCE 6
“sterilizing containers in which a plasma treatment is
executed through excitation of an electromagnetic oscilla-
tion 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 steri-
lized are inputted into a chamber “with a transport appa-
ratus 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 con-
tainers to be sterilized include “ampules, septic glass
containers, syringes, vials, and other so-called parentera-
lia packages, or in beverage bottles.” J.A. 881.
Figure 1 of Burger shows a schematic view of the ster-
ilization 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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IN RE: DURANCE 7
Id. According to the written description, rotating the
containers through the vacuum chamber during transpor-
tation allows for all regions of the containers to be sub-
jected to plasma “in the same manner.” J.A. 883.
In addition, Figures 6 and 7 of Burger show the ar-
rangement 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

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IN 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 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 re-
jected 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 effec-
tive 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.

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IN RE: DURANCE 9
containers” into a vacuum chamber and subjecting the
containers to a microwave source. J.A. 148. Next, refer-
encing Figures 6 and 7, the examiner stated that Burger
teaches a means for rotating the container using “rotata-
ble 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 limita-
tion “for the purpose of balanc[ing] out the microwave
radiation on the surfaces of the container over the treat-
ment 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 descrip-
tion 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 specifica-
tion. 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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IN RE: DURANCE 10
The amendment did not modify claim 1 but added lan-
guage 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 improp-
er 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 specifica-
tion, which states that the divider walls within the con-
tainer “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 inter-
view 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.

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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 tum-
bling 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

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IN RE: DURANCE 12
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, per-
mitting the container to roll, under the force of
gravity, into the input chamber 88. The air cylin-
der 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, tum-
bling the material in the container as the material
is being dehydrated.
J.A. 685.4 The examiner did not designate this structur-
al-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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IN 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 applica-
tion 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 satis-
fy” 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.

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IN RE: DURANCE 14
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 indi-
vidual 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 struc-
tural identity, which it claims were made in direct re-
sponse 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 in-
cludes 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.

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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 combi-
nation 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 require-
ments 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. Howev-
er, “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 argu-
ments 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).
S TANDARD 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,

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IN RE: DURANCE 16
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 evi-
dence 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, Du-
rance 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 con-
tinually 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 embodi-
ments 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 subse-
quent telephone interview on December 23, 2014, the
examiner cited to paragraph 54 of Burger, describing the

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IN RE: DURANCE 17
embodiment in Figure 8 of Burger as disclosing the tum-
bling 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 struc-
ture. Appellee’s Br. 9–10.
The Patent Office’s discussion of inherency also re-
sulted in moving target rejections for Durance to traverse.
In her Final Office Action, the examiner rejected Du-
rance’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 misappre-
hended 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 articu-
lations, 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.

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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-identity findings cannot be applied
to the method claims “because even the identical struc-
ture would not perform all the steps unless operated in
the correct manner and used with a partially filled con-
tainer.” Id. We agree with Durance.
The Board relied on 37 C.F.R. § 41.41(b) to find waiv-
er. 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 particu-
lar, 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

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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 talis-
manic words to indicate a ground of rejection. Appellee’s
Br. 28–29. But in this case, there is no mention of struc-
tural identity with Figure 8 of Burger before the examin-
er’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 consider-
ing arguments that could have been brought in an appli-
cant’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).

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IN RE: DURANCE 20
er’s answer, of this ground on which his application was
being rejected.8
It was therefore proper under § 41.41(b)(2) for Du-
rance 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 rejec-
tion, 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 re-
quired 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 cita-
tions 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 conclu-
sion. Under 35 U.S.C. § 112, ¶ 6,9 a means-plus-function
8 The Patent Office’s Manual of Patent Examina-
tion 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 applica-
tions “filed on or after” September 16, 2012. See AIA §
4(e), 125 Stat. at 297. Because the ’989 application was

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IN RE: DURANCE 21
claim is “construed to cover the corresponding structure,
material, or acts described in the specification and equiva-
lents 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 perfo-
rated 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. Lon-
gitudinally-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 pro-
mote tumbling of the organic material when the container
is rotated.”). And the Board should therefore have con-
sidered 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.

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IN RE: DURANCE 22
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 equiva-
lency, 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 deter-
mine 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.

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