Monday, November 19, 2012

"In re Best" cited in Ex parte Olsen

In Ex parte OLSEN , a number of cases are cited:

Of written description:

The test for determining compliance with the written description requirement is whether the disclosure of the application as originally filed reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter, rather than the presence or absence of literal support in the specification for the claim language.
In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).

In re Best, and other cases are cited by the Board:

“[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).
“[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. . . . Whether the rejection is based on “inherency” under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977).

One needs to compare to the closest prior art of record:

Assuming this is the evidence Appellants rely on for their argument, it is not evidence of nonobviousness because it does not make a comparative showing to the closest prior art of record, Randall‟s formulation of tapioca starch and fragrance. See Baxter Travenol, 952 F.2d at 392.


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