IN RE: TIMOTHY D. DURANCE, JUN FU, PARASTOO YAGHMAEE, Appellants
from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. 12/682, 989.
Jonathan Kennedy, McKee, Voorhees & Sease, P.L.C., Des
Moines, IA, argued for appellants. Also represented by Kirk
M. Hartung, Michael Gilchrist, Robert Scott Johnson,
Christine Marie Lebron-Dykeman.
L. Kelly, Office of the Solicitor, United States Patent and
Trademark Office, Alexandria, VA, argued for appellee Andrei
Iancu. Also represented by Nathan K. Kelley, Thomas W.
Krause, Philip J. Warrick.
Lourie, Reyna, and Chen, Circuit Judges.
D. Durance, Jun Fu, and Parastoo Yaghmaee appeal from a
decision by the Patent Trial and Appeal 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 examiner's answer, we vacate the
Board's determination of obviousness and remand for the
Board to consider applicants' reply-brief arguments in
the first instance.
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 container, 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.
claim 1 is representative of the apparatus claims and
1. An apparatus for dehydrating organic material, 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;
(b)a microwave generator;
(c) a microwave-transparent window for transmission of
microwave radiation from the microwave generator into the
(d) means for reducing pressure inside the vacuum chamber;
(e) means for loading the container into the input end of the
(f) means for rotating the container inside the vacuum
chamber so as to tumble the organic material in the
(g) means for moving the rotating container through the
vacuum chamber from the input end to the discharge end
(h) means for unloading the container of dehydrated organic
material from the vacuum chamber at the discharge end
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 apparatus
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
4 depicts the claimed apparatus:
703. As shown in Figure 4 and described in the '989
application's specification, piston 114 pushes the
containers 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.
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:
704. The interior of the container shows divider walls 146
that "divide the interior space into four segments, to
promote the tumbling of the materials in the baskets, as the