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In re Seaborg - 51 C.C.P.A. 1109, 328 F.2d 996 (C.C.P.A. 1964)

Rule:

The "inherency doctrine" infers a lack of novelty in a product under 35 U.S.C.S. § 101 if a comparable process for making the product is found to exist in the art. 

Facts:

Appellant inventor's patent application was denied by appellee Commissioner of Patents (patent board). The Patent Board found that appellant's product was similar to a previously patented product and there was an inference that appellant's product was inherently produced in the prior issued patent.

Issue:

Was there sufficient evidence provided to show that there was a lack of novelty in appellant's invention?

Answer:

No

Conclusion:

On appeal, the United States Court of Customs and Patent Appeals held that the "inherency doctrine" used by the Patent Board to infer a lack of novelty in appellant's invention under 35 U.S.C.S. § 101 was broader than was required by the courts to find anticipation of an issued patent. For a prior patent to be characterized by "anticipation," it was required to contain adequate directions for the practice of an invalidated patent. Appellant's invention was not an anticipation from the prior patented invention because it was no more than a starting point for experiments and it failed to inform one in the art how to practice the invention. The appellate court reversed the decision of the Patent Board denying appellant's application.

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