3M loses on most claims in Ex parte Facer; In re Best cited.
The evidence supports the Examiner‟s conclusion that Kern
anticipates claims 1 and 14. We therefore affirm the anticipation rejection of
claims 1 and 14. Claims 5, 6, 8-10, 12, 13, and 15 have not been argued
separately and therefore fall with claim 1.
but did win on claim 7:
However, the Examiner has not set forth a prima facie case that Kern
anticipates claim 7. We therefore reverse the anticipation rejection of this
In re Best is cited:
[I]t is elementary that the mere recitation of a newly
discovered function or property, inherently possessed by things
in the prior art, does not cause a claim drawn to those things to
distinguish over the prior art. Additionally, where the Patent
Office has reason to believe 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,
it possesses the authority to require the applicant to prove that
the subject matter shown to be in the prior art does not possess
the characteristic relied on.
In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977) (citing In re Swinehart,
439 F.2d 210, 212-13 (CCPA 1971)).
Why the examiner lost on claim 7:
Appellants argue that “Kern‟s weld lines clearly occupy
less than 5% of the surface area in the sinus region” (App. Br. 6). Although
we do not agree with Appellants that this is clear, we conclude that it was
improper for the Examiner to rely on the Figures alone to support this
rejection. Instead, “it is well established that patent drawings do not define
the precise proportions of the elements and may not be relied on to show
particular sizes if the specification is completely silent on the issue.”
Hockerson-Halberstadt, Inc. v. Avia Grp. Int'l, Inc., 222 F.3d 951, 956 (Fed.
Cir. 2000). See also In re Wright, 569 F.2d 1124, 1127 (CCPA 1977)
(“Absent any written description in the specification of quantitative values,
arguments based on measurement of a drawing are of little value.”).