In Re Anthony J. Robertson and Charles L. Scripps
1999 U.S. App. LEXIS 3224, 49 U.S.P.Q. 2d (BNA) 1949, 169 F. 3d 743 (1999)
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Rule of Law:
A prior art reference anticipates a patent claim under the doctrine of inherency only if the missing claim element is necessarily present in the thing described in the reference and would be recognized as such by a person of ordinary skill in the art; mere probabilities or possibilities are insufficient to establish inherency.
Facts:
- The appellants (Robertson) filed a patent application for a disposable diaper with a specific mechanical fastening system.
- Robertson's claimed invention includes a first and second mechanical fastening means for securing the diaper on a wearer during use.
- Robertson's invention also claims a separate 'third mechanical fastening means' specifically designed for securing the soiled diaper in a rolled-up configuration for disposal.
- A prior art reference, the Wilson patent, discloses a diaper with fasteners on strips used to secure the diaper on the wearer.
- The Wilson patent suggests that for disposal, the soiled diaper can be rolled up and the same fasteners used to attach the diaper can be fastened to one another to create a bundle.
- The Wilson patent does not disclose a separate, third fastener dedicated solely to the disposal function.
Procedural Posture:
- Robertson filed a patent application with the U.S. Patent and Trademark Office (USPTO).
- A patent examiner rejected claim 76 of the application, finding it was anticipated by and obvious over the prior Wilson patent.
- Robertson, the appellant, appealed the examiner's rejection to the Board of Patent Appeals and Interferences (Board), an administrative tribunal within the USPTO.
- The Board affirmed the examiner's decision, holding that claim 76 was anticipated by Wilson under the doctrine of inherency.
- Robertson appealed the Board's decision to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Does a prior art patent that discloses a diaper fastening system anticipate, under the doctrine of inherency, a patent claim for a diaper that includes a third, separate mechanical fastening means for disposal, when the prior art only suggests reusing one of the primary fasteners for the disposal function?
Opinions:
Majority - Friedman
No. A prior art patent does not anticipate a claim by inherency where the allegedly inherent feature is not a necessary and certain result of the prior art's disclosure. Anticipation requires that every element of the claim be found, either expressly or inherently, in a single prior art reference. The Wilson patent does not expressly disclose the claimed 'third mechanical fastening means.' For this element to be inherent, it must be necessarily present in Wilson's design, not merely possibly or probably achievable. The Board's theory that Wilson's primary fasteners could be used in an odd way to serve the disposal function relies on a mere possibility, which is insufficient to establish inherency. Because the Board's anticipation finding was incorrect, its obviousness determination, which was based entirely on the same flawed novelty analysis, must also be reversed.
Concurring - Rader
I concur in the judgment to reverse, but for different reasons. The majority incorrectly assumes the claim requires a physically separate third fastener; a means-plus-function reading of the claim and specification allows the first fastener to also serve as the third. Under this reading, Wilson does teach the 'third fastening element.' However, the Board's decision should be reversed on other grounds. Wilson does not teach two other required claim limitations: 1) a disposal means on the 'outside surface' of the diaper (Wilson's is on the inside), and 2) end regions that are in an 'overlapping configuration' when worn (Wilson teaches they should abut). The Board clearly erred by concluding that minor suggestions in Wilson would result in a configuration satisfying these distinct limitations.
Analysis:
This decision reinforces the high bar for invalidating a patent claim based on anticipation by inherency. It clarifies that a prior art reference's mere capability to be used in a way that meets a claim limitation does not constitute an inherent disclosure; the feature must be a necessary and recognized consequence of what is described. This precedent makes it more difficult for patent examiners and accused infringers to defeat a patent by arguing that a feature was 'hidden' within a prior art reference. The case also illustrates how different interpretations of claim language, as shown in the split between the majority and concurring opinions, can lead to different analytical paths to the same result.
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