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In re Robertson - 169 F.3d 743 (Fed. Cir. 1999)

Rule:

If the prior art reference does not expressly set forth a particular element of the claim, that reference still may anticipate if that element is "inherent" in its disclosure. 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.

Facts:

The Patent and Trademark Office Board of Patent Appeals and Interferences found that a claim in appellant's patent application was anticipated by and obvious over appellee's patent. The devices in question involved diaper fasteners. The court reversed the judgment because the evidence relied upon by the Board of Patent Appeals and Interferences was insufficient to establish inherency.

Issue:

Does the Board of Patent Appeals and Interferences’ findings sufficiently show inherency to support the claim that appellant’s patent application was anticipated by appellee’s patent?

Answer:

No.

Conclusion:

The court held that to establish inherency, the extrinsic evidence must make clear that the missing descriptive matter was necessarily present in the thing described in the reference and that it would be so recognized by persons of ordinary skill. Because the board failed to cite extrinsic evidence indicating that the devices in question performed the same function, its finding of inherency was insufficient because it rested upon probabilities or possibilities.

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