Appeal No. 2003-2124
Application No. 09/769,162
to conclude that a prior art process, which is most similar to a
claimed process, achieves substantially the same results, it is
not an impermissible reliance on an applicant's disclosure to
cite the specification disclosure as evidence of an inherent
occurrence. For instance, if a claimed three-step process is
disclosed as generating oxygen, and a prior art reference
discloses a process comprising substantially the same three steps
but is silent with respect to the generation of oxygen, it is
appropriate to cite the specification as evidence that, prima
facie, the prior art process inherently generates oxygen. To
conclude otherwise would effectively vitiate the well-established
doctrine of inherency in patent jurisprudence.
Appellants' reliance on In re Wertheim, 541 F.2d 257, 269,
191 USPQ 90, 102 (CCPA 1976) is misplaced. The court held in
Wertheim that the claimed density of the final product was
produced by regulation or control of the foam density and solids
content, and no such control was taught by the prior art. As for
appellants' citation of Ex parte Lemoine, 46 USPQ2d 1420, 1430
(BPAI 1994), the doctrine of inherency was not at issue.
Moreover, Lemoine was precedential on the sole issue of the
construction of 35 U.S.C. § 134, not for the rejection under
35 U.S.C. § 103.
-3-
Page: Previous 1 2 3 4 5 Next
Last modified: November 3, 2007