Interference No. 103,587
Katayama’s opposition is simply that the whereby (or thereby) clause contains actual
functional recitations of structure or method, and that the clauses must be treated as substantive
claim limitations in deciding questions of validity. Pac-Tec v. Amerace Corp., 903 F.2d 796,
801, 14 USPQ2d 1871, 1876 (Fed. Cir. 1990), cert. denied, 502 U.S. 808 (1991). The senior
party’s position is to the effect that the charge of unpatentability must fail because the prior art
relied on does not teach marking or generating variable size dots.
We are of the opinion that Levien has not established that claims 42, 43, 48 and 49 are
anticipated by Fawcett under 35 U.S.C. § 102 or unpatentable over Fawcett and Floyd under
35 U.S.C. § 103. A whereby clause is given no weight where the clause only expresses
necessary or inherent results of what is recited in the claims. Texas Instruments Inc. v.
International Trade Commission, 988 F.2d at 1172, 26 USPQ2d at 1023. Here the clauses in
question do not express necessary results of what is recited in the claims because, although
Levien has shown that Fawcett meets what is recited in the claims, Levien has not shown that the
whereby and thereby clauses express necessary results of what is recited in the claims. Fawcett
has not been shown to produce variable size dots, even though it meets the elements recited in
the claims. Whereas Levien has not established that the subject matter of the whereby and
thereby clauses are taught by Fawcett, the claims are not anticipated by this prior art. In view of
the fact that Levien has not established that the subject matter of the clauses is taught by Fawcett
or Floyd, or that it would have been obvious to modify the combined teachings of Fawcett and
Floyd to include that subject matter, the junior party has not carried its burden of establishing the
obviousness of the claims over the prior art.
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