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I couldn’t have said it better myself August 12, 2011

Posted by Brian Schar in Patent prosecution, USPTO.
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“A rejection founded in anticipation cannot be predicated on conjecture as to how the allegedly anticipating structure is constructed and arranged.”  Although Ex parte Berg is nonprecedential, nothing would stop you from cribbing that language and citing the Federal Circuit cases cited in support of it.

In short, claim 1 of Berg was rejected over Santalla, where Santalla was silent as to two separate claim elements.  As Examiners often do, this one simply assumed that Santalla described the two claim elements, and as a result was reversed.

I view this as a subset of inherency.  Inherency has to be shown by technical reasoning, not a mere assertion that the device of a reference was “capable of” a function or “considered to have” a claim element.  In Ex parte Berg, the Examiner essentially found that the two claim elements not expressly taught by Santalla were inherently present in Santalla, without saying so expressly.  This language in Ex parte Berg provides another avenue of attack for such an unfortunately-common veiled inherency rejection.

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