Yesterday's Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Chin reversed a Patent Examiner's 35 U.S.C. 102 anticipation rejection, thereby rejecting the Examiner's inherency argument. As a working Patent Lawyer in Miami Florida, I like reading BPAI decisions that show me how to reverse a Patent Examiner's rejection.
The Ex Parte Chin case involved a safety syringe having a retractable needle. The disputed claim element recited a shoulder (of the needle) that was smaller than the hole in the cylinder (so the shoulder could be pulled into the hole). But the prior art of record, Crawford, showed a drawing of a shoulder that was larger than the hole.
First, the Examiner explained away the incongruency by pointing out that the Crawford drawings were not to scale - concluding that we shouldn't give much weight to the Crawford drawings. The Board disagreed and said: "While Crawford does not describe that the drawings are to scale, that does not mean 'that things patent drawings show clearly are to be disregarded.' In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972).
Next, the Examiner asserted that although the Crawford drawings did not point out the exact recited claim element, having a shoulder that was smaller than the hole in the cylinder was inherent. Again, the Board disagreed and stated: "[Crawford's] Figure 6 shows the relative sizes of the shoulder and aperture, and as the Examiner has not directed us to any disclosure in Crawford that supports the position the aperture is sized larger than the shoulder, we find that inherency has not been established. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) ("Inherency ... may not be established by probabilities or possibilities.")
What does this for the patent practitioner? Inherency is a factual determination and a Patent Examiner must come up with a good reason for this determination. Ideally, the Examiner would provide supporting evidence, such as textbooks, academic articles, etc., as well as convincing articluated resoing for this finding. If the Examiner only provides some weak "Examiner arguments," and has little or any evidence to make his case for inherency, then you have a good premise for reversing this finding at the Board of Patent Appeals.