Monday, March 11, 2013

In re Best issues discussed in Ex parte Colburn

Ex parte Colburn has a lengthy discussion of In re Best:

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
(“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.”).


We find that the Examiner presented a sound rationale for believing
that the cuff formed by the process of Wang would inherently have a higher
tensile strength than the original tube material (Ans. 11; see also Final
Office Action 9). Having done so, Appellants have the burden of showing
that they are not. Best, 562 F.2d at 1254–55.
Appellants have not met this burden. Appellants merely argue ...

BUT a canard appears:

“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). Thus, for the
same reasons discussed above, we affirm each of the obviousness rejections.


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