Thursday, June 20, 2013

PTAB reverses examiner in Ex parte SCHURG

from Ex parte Schurg

On inherency:

The express, implicit, and inherent disclosures of a prior art reference
may be relied upon in the rejection of claims under 35 U.S.C. §§ 102 or 103.
“The inherent teaching of a prior art reference, a question of fact, arises both
in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610,
613 (Fed. Cir. 1995). However, the fact that a certain result or characteristic
may occur or be present in the prior art is not sufficient to establish the
inherency of that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534
(Fed. Cir. 1993) (rejection reversed because alleged inherency was based on
what would result due to optimization of conditions, not what was
necessarily present in the prior art); see also, In re Oelrich, 666 F.2d 578,
581-82 (CCPA 1981). “To establish inherency, the extrinsic evidence must
make clear that the missing descriptive matter is necessarily present in the
thing described in the reference, and that it would be so recognized by
persons of ordinary skill. Inherency, however, may not be established
by probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” In re Robertson, 169
F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotations omitted). In
relying upon the theory of inherency, the examiner must provide a basis in
fact and/or technical reasoning to reasonably support the determination that
the allegedly inherent characteristic necessarily flows from the teachings of
the applied prior art
. Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App.
& Inter. 1990).


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