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In re Durance

No Waiver Where Patent Applicant Addressed Examiner’s “Shifting” Arguments in Reply

In re Durance, __ F.3d __, 2018 WL 2449232 (Fed. Cir. June 1, 2018) (Lourie, REYNA, Chen) (PTAB) (3 of 5 stars)

Fed Cir vacates determination of obviousness and remands. The PTAB failed to consider applicants’ reply arguments, properly made in response to the examiner’s answer. The opinion describes how “the Patent Office continually shifted its position” during examination as to which structures in the prior art it was relying on in rejecting the claims. Op. at 16. “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 [the reference] the Board relied on, and whether the Board relied on inherency[.]” Id. at 17. The opinion determines that the examiner’s answer to the Board gave its “first clear representation” as to the nature of its argument, and thus there was no bar against the Board considering Mr. Durance’s arguments addressing that argument in his reply. The Board’s finding of waiver for such arguments was inappropriate.

KEYWORDS: INITIAL PROSECUTION; WAIVER; REPLY