BIO IPCC events on November 13, 2012

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At Charleston Place

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Judge Reyna at Magnolia's. During his lunchtime talk, Judge Reyna discussed malleability in the law, but did not reveal his thoughts about 35 USC 101.

Also, during the lunchtime talk, Judge Reyna referenced his dissent, in a case involving Judges Bryson and Linn. The case could be Bettcher [see previous IPBiz post MONDAY, OCTOBER 03, 2011 CAFC tackles re-examination estoppel in BETTCHER v. BUNZL ]. Judge Reyna, in dissent, wrote:

Turning to Bettcher’s contention that the chamfers cannot be bearing surfaces because they were not recog- nized or used as such at the time, this court’s decision in In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) is both instructive and controlling. There, a claim directed to a popcorn dispensing spout was found anticipated by a prior art patent directed to a spout for dispensing oil. The claim at issue included both structural elements and functional elements. Id. at 1475. There was no dispute that the structural limitations of the claim were all met by the prior art oil spout. Id. at 1477 (“[The prior art] discloses a ‘dispensing top’ that has ‘a generally conical shape and an opening at each end,’ and ‘means at the enlarged end of the top to embrace the open end of the container, the taper of the top being uniform.’”). Rather, Schreiber relied on the functional elements of the claim to establish patentability, arguing that the prior art oil spout patent “does not disclose that such a structure can be used to dispense popcorn from an open-ended popcorn container.” Id. at 1477; see also id. at 1475 (claim provid- ing, for example, that “the opening at the reduced end allows several kernels of popped popcorn to pass through at the same time”).
The court explained that “choosing to define an ele- ment functionally, i.e., by what it does, carries with it a risk” in that “a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art.” Id. at 1478 (quoting In re Swinehart, 439 F.2d 210, 212 (CCPA 1971)). To find that a claim element is inher- ently disclosed in the prior art, it must necessarily be present in the prior art. King Pharms., 616 F.3d at 1274. Because the oil spout in Schreiber was “capable of” dis- pensing popped popcorn in the manner set forth in the claim, it inherently satisfied all of the functional limita- tions and anticipated the claimed popcorn spout. 128 F.3d at 1478-79.

The majority had noted:

“Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). Here, Bunzl attempts to characterize one structure (chamfers) as a completely different structure (a bearing race) based on a hypothetical configuration of surrounding structures disclosed nowhere in the prior art (expressly or inherently) and suggested by nothing in the record. A “bearing face,” and the bearing race of which it must be a part, may have both structural and functional limitations, but the functional limitation requires more than the ability to bear for a short period of time at an unusually slow speed. Bunzl failed to demonstrate that the pre- 1998 blades were capable of anything more, and the jury was therefore fully entitled to reject Bunzl’s argument in light of the evidence at trial. Bunzl’s reliance on Schrei- ber to the contrary is misplaced.

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**Separately, from AP/finance.yahoo :

Justice Ruth Bader Ginsburg found herself in an unusual place for high court justices, among Glamour magazine's Women of the Year. "The judiciary is not a profession that ranks very high among the glamorously attired," she told the audience as the magazine honored the women at Carnegie Hall in New York. Ginsburg also noted that she might have been the second woman to join the high court after Sandra Day O'Connor, but she was the first honored by Glamour.