It is well-settled in administrative law that the applicant needs to be provided with sufficient details as to the reason for rejection of their application by an administrative body. In patent law, the USPTO needs to support their rejections with reasoning and evidence.
One area where things get murky is with regard to rejections where the examiner relies on a prior art reference not only for what it teaches in the body of the patent document, but also for the “background” taught by the reference. As we have discussed in previous posts, the applicant needs to be especially tuned in to such issues where an examiner may be improper combining disparate teachings in a single reference (which must be performed under Section 103 obviousness, not 102 anticipation). However, even where an examiner would like to combine teachings from the “background” to the main body of the application, there are approaches that fall under the Section 102 anticipation regime. Namely, where the examiner is allegedly merely using the background as “evidence” to show inherent characteristics.
This approach is sanctioned by MPEP § 2131.01(II) and cases cited therein which include a discussion of how an examiner can rely on additional evidence to show inherent characteristics of the subject matter relied upon in an anticipatory reference. What is so dangerous about this approach is that, if the applicant is not careful to recognize this back-door rejection, they can fail to confront it at all and lose their case (especially on appeal). What happens is that the applicant is so focused on the lack of disclosure (or maybe even teaching away) in the detailed specification, that they miss the nuanced rejection in which the examiner is relying on inherent disclosure as evidence by another portion of the reference (e.g., the background), because the examiner never calls it out with the flag “inherent.”
Looking to an actual example helps illuminate these issues. A recent PTAB decision in 14/209,052 is illustrative. Here, the applicant (Boeing) was seeking to patent a structural armor for a space structure formed by a process comprising:
a) providing an angular member core, the angular member core having a plurality of front and rear nodes;
b) bonding a front armor facesheet to the front nodes of the angular member core; and
c) bonding a rear armor facesheet to the rear nodes of the angular member core, the rear armor facesheet being offset from the front armor facesheet.
The Examiner rejected the claim as anticipated by (or in the alternative obvious) in view of a reference called Wadley (US 2009/0286100).
The Applicant focused on the individual teachings of the background and the specification, but never actually addressed the inherency argument. As such, it was easy for the PTAB to affirm (internal citations removed - read the full opinion and appeal brief here):
In the anticipation rejection the Examiner relies on the acknowledged prior art embodiment discussed in the “Background of the Invention” section of Wadley. To the extent the Examiner relies on any aspect of Wadley’s disclosure concerning Wadley’s preferred embodiment, the Examiner does so only as evidence of what the structure having bonded facesheets relied upon by the Examiner for purposes of anticipation is, with the understanding that this structure has an otherwise generally identical geometric structure to Wadley’s improved extruded version. Appellant’s remarks address only the disclosure of Wadley relating to Wadley’s purportedly improved extruded monolithic panels and not the version having the bonded facesheets relied upon by the Examiner. Accordingly, the Examiner’s finding that the acknowledged prior art embodiment discussed in the “Background of the Invention” section of Wadley anticipates the claimed subject matter is uncontroverted.
So, be careful when the examiner cites to other portions of a reference and make sure you understand how MPEP 2131.01(II) operates. Inherency usually leaves a wide door open for an attach, but if the applicant never argues the point it is easy for the examiner’s rejection to stand on appeal.