Sunday, February 10, 2013

"Anticipation is the epitome of obviousness"?

From within Ex part BOYLE

Anticipation requires that every element and limitation of the claimed invention must be found in a single prior art reference, arranged as in the claim. Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001).

The Examiner has the burden of providing reasonable proof that a claim limitation is an inherent characteristic of the prior art. In re Best, 562 F.2d 1252, 1254–55 (CCPA 1977) (“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, and its fairness is evidenced by the PTO‟s inability to manufacture products or to obtain and compare prior art products.”); see also Crown Operations Int'l, Ltd. v. Solutia Inc., 289 F.3d 1367, 1377 (Fed. Cir. 2002). The Examiner meets this “burden of production by „adequately explaining the shortcomings it perceives so that the applicant is properly notified and able to respond.‟” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007)). The burden of proof then shifts to the applicant “to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.” Best, 562 F.2d at 1255 (“Where ... the claimed and prior art products are identical or substantially identical, ... 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.”); In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“[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.”).

AND, as to obviousness,

The same issues are dispositive of each obviousness rejection on appeal. First, each of the rejections for obviousness relies on the Examiner‟s
finding that Surjadi, as evidence by Stammer, identically discloses the apparatus of claim 36. “It is well settled that „anticipation is the epitome of obviousness.‟” In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (quoting In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982). Accordingly, Surjadi also renders claim 36 obvious. Claims 37-69 fall with claim 36. 37 C.F.R. § 41.37(c)(1)(vii).
Second, Appellants further argue that the additionally cited references, Walter, Marx, Brown and Kidd, “significantly change[] the principal mode of operation of Surjadi” (App. Br. 13-20). We are note persuaded. “A change in the basic principles” refers to change that is fundamental in scope to the scientific or technical principles under which the invention is designed to operate. In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (“This suggested combination of references would require a substantial reconstruction and redesign of the elements shown in [the primary reference] as well as a change in the basic principles under which the [primary reference] construction was designed to operate.”). It cannot be said that “change in the basic principles” occurs by all modifications of a prior art device which changes the manner in which the device operates. Otherwise, even nominal modification to a prior art device could be considered a “change in the basic principles,” thereby eliminating the need for obviousness analysis under 35 U.S.C. § 103.


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