Ex parte Thomsen

June 17, 2011 – Blog Post

This was a win and the critical issue was whether the Examiner met the required burden to establish that a functional limitation was inherent in the cited prior art because “ [i]nherency. . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991). 

The invention in Thomsen (Appeal No. 2010-003718) is a soda-lime glass that “has a transmission at a wavelength of 320 nm of at least about 60% and. .. UV transmission (300-400 nm) of at least 84%.” (Claim 1 of U.S. application serial no. 11/583,135).  The questions before the Board were whether the claims were anticipated or obvious in view of primarily U.S. patent no. 6,461,736 to Nagashima et al

After assessing the invention described in Thomsen’s application, the Board’s focus was on the “strictly functional” transmission limitations.  Although the Board noted that there may be a question of whether the claim limitation is proper, presumptively under the standards of written description, enablement and/or definiteness, because that issue was never raised by the Examiner, the Board “need not decide this issue, both because the Examiner has not raised it, and because our evaluation of the claims in light of the applied prior art does not require further inquiry at this stage.”

The Board reversed the Examiner’s rejection because

In the present case, the Examiner has failed to establish that Nagashima describes a soda-lime glass that meets the transparency requirements of claim 1. The Examiner does not direct our attention to any particular example in Nagashima; nor does the Examiner direct our attention to any particular description of a glass that would necessarily meet those requirements. Certainly none of the transmission spectra shown in Figures 9-12 come close to meeting the 84% transmission requirement between 3 00-400 nm. While one might infer that such a glass might be made, such an inference is not a demonstration of anticipation. This is particularly so when every exemplified or expressly described embodiment in Nagashima relates to glass having high transmissivity in the visible region of the spectrum, and UV-transmissivity is treated as an undesirable feature. Under such circumstances especially, the Examiner’s argument that some embodiment within the scope of Nagashima’s disclosure must meet claim 1 fails as a proof of anticipation.