Tuesday, April 09, 2013

Examiner reversed in Ex parte Mamo

from Ex parte Mamo

Of anticipation:

“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631
(Fed. Cir. 1987). “A reference may anticipate inherently if a claim
limitation that is not expressly disclosed ‘is necessarily present, or inherent,
in the single anticipating reference.’. . . The inherent result must inevitably
result from the disclosed steps; ‘[i]nherency . . . may not be established by
probabilities or possibilities.’” In re Montgomery, 677 F.3d 1375, 1379-80
(Fed. Cir. 2012) (citations omitted, alterations to second quote in original).

For the reasons discussed above, Browning does not expressly
disclose that element 44 is a slot. The Examiner has not provided evidence
or technical reasoning to show that Browning’s recessed portion 44 would
inherently – that is, necessarily – have taken the form of a slot. Thus, the
Examiner has not provided adequate evidence to support the finding that
Browning discloses a product meeting all of the limitations of claim 54. The
rejection of claims 54-57 and 62-67 for anticipation is reversed.

The rejections based on 35 U.S.C. § 103(a) also rely on the
Examiner’s finding that Browning discloses anchors having a slot (Answer
5-7). We therefore reverse the rejections under § 103(a) for the reasons
discussed above.


Post a Comment

<< Home