Tuesday, April 02, 2013

In re Best cited in Ex parte DAMSOHN

from Ex parte DAMSOHN

It is fundamental patent law that “each and every claim limitation
must be explicitly or inherently disclosed in the prior art” for an anticipation
rejection to be proper.
In re NTP, Inc., 654 F.3d 1279, 1302(Fed. Cir. 2011).


First, the predecessor to our reviewing
court explained in
In re Eynde, 480 F.2d 1364, 1370 (CCPA 1973), that facts
constituting the state of the art are
normally subject to the possibility of
rational disagreement among reasonable
people and are not amenable to the
taking of official notice. Second, in
In re Ahlert, 424 F.2d 1088, 1091
(CCPA 1970) the court held that assertions of technical fact in areas of
esoteric technology must always be supported by citation to some reference
work [admitted in evidence] and recognized
as standard in the pertinent art.
Moreover, the court held, facts officially noticed should not constitute the
principal evidence upon which a rejection is
based. Thus, mere assertions of
fact, unsupported by evidence of record and an explanation, are not
persuasive. We therefore reverse the rejection of the independent claims as


reviewing court “has accepted the PTO's practice of basing rejections on
sections 102 or 103 in the alternative,
provided that the appellant was fully
apprised of all the grounds of rejection.”
In re Spada,911 F.2d 705, 707 n.2
(Fed. Cir. 1990) (citation omitted). As
the predecessor to our reviewing
court has explained, “[w]hether 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, and its fairness is
evidenced by the PTO’s inability to manufacture products or to obtain and
compare prior art products. See
In re Brown, 459 F.2d 531, 59 CCPA 1036,
173 USPQ 685 (1972).”
In re Best
, 562 F.2d 1252, 1255 (CCPA 1977). We
leave it to the discretion of the Examiner and Damsohn, in the first instance,
to consider whether such a case could be established on the present record,
or on a record augmented by
additional prior art.


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