Monday, March 11, 2019

CAFC in Personal Web: "substantial evidence" meets the brick wall of inevitable inherency

The decision of the Board was found not to pass the substantial evidence threshold:

We conclude that the Board’s inherency finding derived
from column 17 of Woodhill for teaching the “compared to
a plurality of values” limitation lacks substantial evidence.
While it is possible that Woodhill’s system utilizes an unstated Binary Object
Identifier lookup table to locate binary objects of a previous version of a file that is going to
be restored (column 17 of Woodhill), mere possibility is not
enough. “Inherency . . . may not be established by probabilities or possibilities.”
PAR Pharm., Inc. v. TWI Pharm.,
Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014). “The mere fact
that a certain thing may result from a given set of circumstances is not sufficient.”
Id. (emphasis added). Rather, a
party must “show that the natural result flowing from the
operation as taught would result in the performance of the
questioned function.” Id. (emphasis in original).

As PersonalWeb suggests, an equally plausible, if not
more plausible, understanding of Woodhill is that
Woodhill’s system uses conventional file names and locations
to locate files and the Binary Object Offset field to
locate a given binary object within a file.

Because we find that the proposed, theoretical Binary
Object Identifier look-up table that Apple and the Board
rely on does not necessarily exist in Woodhill, the Board’s
reliance on inherency for that element in its obviousness
analysis was improper


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