2112

2112 Requirements of Rejection Based on Inherency; Burden of Proof [R-3]

GRASSELLI

Moreover, the evidence presented in the Specification is not reasonably commensurate in scope with independent claims 1 and 19. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (concluding that unexpected results “limited to sodium only” were not commensurate in scope with claims to a catalyst having “an alkali metal”).

NAPIER

Inherency is a question of fact that arises both in the context of anticipation and obviousness rejections. See In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995).

I. SOMETHING WHICH IS OLD DOES NOT BECOME PATENTABLE UPON THE DISCOVERY OF A NEW PROPERTY

ATLAS POWDER

AtlasPowder Co. v. Ireco Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999) (“[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.”).

Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999) (“[T]he discovery of . . . a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.”)

II. INHERENT FEATURE NEED NOT BE RECOGNIZED AT THE TIME OF THE INVENTION

SCHERING

In general, a limitation is inherent if it is the “natural result flowing from” the explicit disclosure of the prior art. Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1379, 67 USPQ2d 1664 (Fed.Cir. 2003).

In Schering Corp. v. Geneva Pharmaceuticals, 339 F. 3d 1373, 1378 (Fed. Cir. 2003), the Court distinguished cases dealing with “accidental, unwitting, and unappreciated” anticipation, Eibel Process Co. v. Minn. & Ontario Paper Co., 261 U.S. 45 (1923) and Tilghman v. Proctor, 102 U.S. 707 (1880), where the record did not conclusively establish that the prior art produced the claimed subject matter, from cases in which the record established that the claimed subject matter necessarily and inevitably was a consequence of practicing a prior art process under the normal, as opposed to hypothetical or unusual, conditions disclosed.

See Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1328, 58 USPQ2d 1545, 1553 (Fed. Cir. 2001)(“[R]ecourse to extrinsic evidence is proper to determine whether a feature, while not explicitly discussed, is necessarily present in a reference.”).1

1 While we cite to Telemac Cellular Corp., we note that the Court in Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003), rejected the contention that inherent anticipation requires recognition in the prior art. Thus, recognition by a person of ordinary skill in the art before the critical date of a patent is not required to show anticipation by inherency.

SMITHKLINE

In other words, “[t]he patentability of a product does not depend on its method of production.” SmithKline, 439 F.3d at 1317.

SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed. Cir. 2005) (breadth is not indefiniteness); see also In re Gardner, 427 F.2d 786, 788 (CCPA 1970).

However, the Examiner confuses breadth with indefiniteness. The Examiner is correct that by setting the predefined numerical accuracy to infinity, any finite sequence is within infinity of any infinite sequence. Such vast breadth may well be relevant to enablement or anticipation, but "breadth is not indefiniteness." SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed. Cir. 2005) (quotation omitted). "Merely claiming broadly does not render a claim insolubly ambiguous, nor does it prevent the public from understanding the scope of the patent." Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1352 (Fed. Cir. 2009).

III. A REJECTION UNDER 35 U.S.C. 102/103 CAN BE MADE WHEN THE PRIOR ART PRODUCT SEEMS TO BE IDENTICAL EXCEPT THAT THE PRIOR ART IS SILENT AS TO AN INHERENT CHARACTERISTIC

BEST

“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.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977).

IV. EXAMINER MUST PROVIDE RATIONALE OR EVIDENCE TENDING TO SHOW INHERENCY

LEVY

What is lacking from the Examiner’s determinations of inherency is evidence or reasoning to show that the allegedly inherent feature or property must necessarily result from Mimura’s process or structure, respectively. See Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990).

METABOLITE

Consequently, Appellant asserts, the Examiner’s conclusion that Li I and II’s teaching of the genus including “crop high-yield breeding,” “high seed yield,” and “increased biomass,” also inherently includes the claimed properties obtainable by expressing STON1 (AGG3) in transgenic plants, merely invites further investigation, thereby rendering rejection of the claimed features improper. App. Br. 17 (citing Metabolite Labs., Inc. v.Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1367 (Fed. Cir. 2004)) (holding that a “prior art reference that discloses a genus still does not inherently disclose all species within that broad category” and “simply invites further experimentation to find such association”).

OELRICH

The use of extrinsic evidence is permissible to show that the missing descriptive material is necessarily present in the prior art reference description and that it would be so recognized by persons of ordinary skill.Continental Can Co, U.S.A. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991) (citing In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).

see also Par Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc., 2014-1391, 2014 WL 6782649, at *6–*7 (Fed. Cir., Dec. 3, 2014) (inherency is limited when applied to obviousness and is present only when the limitation at issue is the “natural result” of the combination of prior art elements; quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981))

An inherent characteristic must be inevitable, and not merely a possibility or probability. See In re Oelrich, 666 F.2d 578, 581 (CCPA 1981).

RIJCKAERT

In re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ 1955, 1957 (Fed. Cir. 1993) (“That which may be inherent is not necessarily known. Obviousness cannot be predicated on what is unknown.”)

As stated in In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (quoting from In re Oelrich, 666 F.2d at 581), "[t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient [to establish inherency]" (emphasis in original).

“The mere fact that a certain thing may result from a given set of circumstances is not sufficient [to establish inherency]” (emphasis in original). In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981).

ROBERTSON

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).

Under principles of inherency, when a reference is silent about an asserted inherent characteristic, it ‘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.’ In re Robertson, 169 F.3d 743, 745 (Fed. Cir.1999).

To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).

“Inherent anticipation requires that the missing descriptive material is ‘necessarily present,’ not merely probably or possibly present, in the prior art.” Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002) (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)).

SCHREIBER

“It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).

It is well settled that in order for the Examiner to establish a prima facie case of anticipation, each and every element of the claimed invention, arranged as required by the claim, must be found in a single prior art reference, either expressly or under the principles of inherency. See generally, In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).

Claims directed to an apparatus must be distinguished from the prior art on structural grounds. See In re Schreiber, 128 F.3d 1473, 1477-1478 (Fed. Cir. 1997).

TRINTEC

2112.01 Composition, Product, and Apparatus Claims [R-3]

I. PRODUCT AND APPARATUS CLAIMS - WHEN THE STRUCTURE RECITED IN THE REFERENCE IS SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE PRESUMED TO BE INHERENT

BEST

[W]here 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).

GULACK

Descriptive material is not entitled to patentable weight unless there is a functional relationship to the substrate. In re Gulack, 703 F.2d 1381, 1386 (Fed. Cir. 1983); Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (nonprecedential) (Fed. Cir. Appeal No. 2006-1003, aff’d Fed. Cir. R. 36 June 12, 2006). Here, a data structure is only an arrangement of data that bears no functional relationship to the substrate (computer readable medium) that stores the data and it is not entitled to patentable weight.

c.f., In re Gulack, 703 F.2d 1381, 1386-87 (Fed. Cir. 1983) (reversing a rejection because the printed matter and the circularity of the underlying substrate were interrelated so as to produce a new product).

KING

The Examiner must make out a prima facie case, through evidence or explanation, that what is urged as inherent necessarily flows from the teachings of the prior art before the burden is shifted to an applicant to disprove the inherency theory. See In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986).

LUDTKE

SWINEHART

In re Swinehart, 439 F.2d 210 (CCPA 1971), sets forth the burden of proof required to overcome an inherency rejection:

[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. [439 F.2d at 212-13, 58 CCPA at 1031, 169 USPQ at 229.] This burden was involved in In re Ludtke, 441 F.2d 660, 58 CCPA 1159, 169 USPQ 563 (1971), and is applicable to

product and process claims reasonably considered as possessing the allegedly inherent characteristics. In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977).

Language in an apparatus or product claim directed to the function, operation, intent-of-use, and materials upon which the components of the structure work that does not structurally limit the components or patentably differentiate the claimed apparatus or product from an otherwise identical prior art structure will not support patentability. See, e.g., In re Rishoi, 197 F.2d 342, 344-45 (CCPA 1952); In re Otto, 312 F.2d 937, 939-40 (CCPA 1963); In re Ludtke, 441 F.2d 660, 663-64 (CCPA 1971); In re Yanush, 477 F.2d 958, 959 (CCPA 1973).

SPADA

The Examiner must supply a "sound basis for believing that the products of the applicant and the prior art are the same" before "the burden of showing that they are not" is shifted to the applicant. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)

(“After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument.”) (citing, inter alia, In re Spada, 911 F.2d 705, 707 n.3 [sic - n.4] (Fed. Cir. 1990));

"Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).

TITANIUM

As stated in In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003), referring to Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir.1985): We have also held that a prima facie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties.

“It is also an elementary principle of patent law that when, as by recitation of ranges, or otherwise, a claim covers several compositions, the claim is “anticipated” if one of them is in the prior art.” Titanium Metals Corp. of Am. v. Banner, 778 F.2d. 775, 782 (Fed. Cir. 1985). While the referenced case is directed to chemical compositions, we find that it is equally applicable to claims which provide limitations in the alternative. See Also Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1377-1381 (Fed. Cir. 2009)( If a limitation is optional, then prior art without the optional limitation can anticipate).

II. COMPOSITION CLAIMS - IF THE COMPOSITION IS PHYSICALLY THE SAME, IT MUST HAVE THE SAME PROPERTIES

SPADA

In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990) (“Products of identical chemical composition cannot have mutually exclusive properties.”)

III. PRODUCT CLAIMS - NONFUNCTIONAL PRINTED MATTER DOES NOT DISTINGUISH CLAIMED PRODUCT FROM OTHERWISE IDENTICAL PRIOR ART PRODUCT

GULACK

"[t]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate." Mindrum 1 5 (quoting In re Gulack, 703 F.2d 1381, 1386 (Fed. Cir. 1983))

We recognize that the "[d]ifferences between an invention and the prior art cited against it cannot be ignored merely because those differences reside in the content of the printed matter." Gulack, 703 F.2d at 1385.

MILLER

Printed matter can patentability distinguish a claimed invention from the prior art when the critical question of whether there exists any new and unobvious functional relationship between the claimed printed matter and the claimed substrate is answered in the affirmative. In re Miller, 418 F.2d 1392, 1396 (CCPA 1969); In re Gulack, 703 F.2d 1381, 1386 (Fed. Cir. 1983); and In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004) (“The PTO has the better argument”).

NGAI

The content or meaning of printed matter recited in a claim does not structurally distinguish the subject matter of the claim from prior art unless there is a new or nonobvious functional relationship between the printed matter and the remainder of the claimed subject matter. See In re Ngai, 367 F.3d 1336, 1338-39 (Fed. Cir. 2004).

Printed matter may patentably distinguish a claimed invention from the prior art when the critical question of whether there is a new and unobvious functional relationship between the printed matter and the substrate is answered in the affirmative. In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004). To show a new and unobvious functional relationship, it has to be shown that the printed matter would not achieve its purpose without the substrate and the substrate without the printed matter would similarly be unable to produce the desired result. Id. at 1339.

Cf. Ngai, 367 F.3d at 1339 (addition of a set of written instructions to an otherwise known kit did not distinguish the claimed kit from the prior art).

We answered that question in the negative, finding "[w]here the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability." In re Ngai, 367 F. 3d 1336, 1339 (Fed. Cir. 2004).

The "critical question" is whether the claimed "identifier" is more than "a new instruction sheet" because it is claimed as a "machine-readable feature configured to provide automatic acquisition of information?" See Ngai, 367 F. 3d at 1338—39 (The Ngai court reasoned that if it "were to adopt Ngai's position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product").

STERLING

[P]atentability cannot be predicated on printing alone. In re Sterling, 70 F.2d 910, 912 (CCPA 1934).

2112.02 Process Claims

PROCESS CLAIMS - PRIOR ART DEVICE ANTICIPATES A CLAIMED PROCESS IF THE DEVICE CARRIES OUT THE PROCESS DURING NORMAL OPERATION

KING

When relying on the theory of inherency, the examiner has the initial burden of providing a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic reasonably flows from the teachings of the applied prior art. See In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986).

TOMLINSON

As stated in Tomlinson, after finding admixing of the compounds to be obvious:

As to the introductory language, ‘a process of inhibiting degradation of polypropylene caused by exposure to light,’ again we do not think these words can serve to patentably distinguish the claimed process from the prior art. That language in effect, states the result of admixing the two materials. While the references do not show a specific recognition of that result, its discovery by appellants is tantamount only to finding a property in the old composition, not in the nickel compound for which, it is argued, a new use has been found.

In re Tomlinson, 363 F.2d 928, 934 (CCPA 1966).

PROCESS OF USE CLAIMS - NEW AND UNOBVIOUS USES OF OLD STRUCTURES AND COMPOSITIONS MAY BE PATENTABLE

In re Hack, 245 F.2d 246, 248 (CCPA 1957) ("These cases are merely expressive of the principle that the grant of a patent on a composition or machine cannot be predicated on a new use of that machine or composition.").