Ex parte Smith

When an examiner shows that the claimed structure's other limitations are expressly disclosed in a single reference and the specification indicates a claimed capability (here, thickness rendering an insert passable through a copier or printer) is no more than the inherent result of building the article from standard materials, a prima facie case of anticipation by inherent capability is made and the burden shifts to the applicant to prove the prior art does not necessarily or inherently possess it. When a claim merely substitutes one known element for another (here, Dick's continuous two-ply glued seam for Wyant's folded seam) with predictable results, and the applicant shows no evidence the change was uniquely challenging or difficult, the substitution is obvious under KSR and the examiner need not provide further analysis. No prior Board precedential or informative decision is named in the text; the decision applies Federal Circuit and Supreme Court authority, including KSR, to ex parte appeals. For the examiner, it confirms that an inherent-capability anticipation rejection can rest on the reference's disclosed structure and standard materials, and that a known-element substitution rejection with predictable results needs no further analysis. For the applicant, it means attorney argument that the reference does not expressly disclose the capability will fail unless evidence shows the prior art lacks it, and that nothing in the specification or arguments shows the substitution was uniquely challenging. Binding authority cited includes In re Best, In re King, In re Spada, In re Cruciferous Sprout Litig., In re Robertson, Graham v. John Deere Co., and KSR Int'l Co. v. Teleflex Inc. LEGAL TEST OR STANDARD: Anticipation requires that each and every element be found, expressly or inherently, in a single reference; inherency applies if the prior art necessarily functions in accordance with, or includes, the claimed limitations, and it may not be established by probabilities or possibilities. Once a prima facie case is made, the burden shifts to the appellant to prove the prior art product does not necessarily or inherently possess the claimed characteristics. For substitution, the Board found that (1) each claimed element is within the scope and content of the prior art; (2) one of ordinary skill could have combined the elements as claimed by methods known at the time; and (3) one of ordinary skill would have recognized the capabilities or functions of the combination were predictable. TRIGGERING FACTS: Claim 35 recited a pocket insert with a thickness rendering it passable through a copier or printer in sequence with a sheet of paper. Michlin expressly disclosed the other limitations: single-thickness front and back plies forming a pocket with an opening facing the binding. The specification said only that the insert should be assembled of standard weight paper, so the thickness was the inherent result of standard materials, and the appellant offered no evidence to rebut. For substitution, Wyant folded a single sheet while Dick glued two separate sheets to form a continuous two-ply seam, both forming a pocket, and no evidence showed the substitution was uniquely challenging or difficult. KEY QUOTE: "The substitution of the continuous, two-ply seam of Dick for the folded seam of Wyant thus is no more than “the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement.”" (Paper N/A, p. 18) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The decision follows In re Best, 562 F.2d 1252 (CCPA 1977), In re King, 801 F.2d 1324 (Fed. Cir. 1986), In re Spada, 911 F.2d 705 (Fed. Cir. 1990), and KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727 (2007), and notes consistency with In re Kuhle, 526 F.2d 553 (CCPA 1975). PRACTICE TIP: When rebutting an inherent-capability anticipation rejection, submit actual evidence that the reference's article cannot or does not necessarily have the claimed capability, and do not rely on attorney argument or on a specification that describes the capability only in terms of standard materials; for substitution rejections, record evidence that the substitution was uniquely challenging or difficult.