Board holds inherency does not require that all embodiments necessarily have claimed feature

Takeaway:  The Applicant appealed claims to an absorbent belted article (e.g., a diaper). The claims recited a belt attached to an absorbent structure by a joint, and also included functional limitations describing the release strength of the joint. The Examiner's anticipation rejection relied on the claimed release strength being inherent in the joint disclosed in the reference. The Applicant argued that inherency was improper here, because the reference taught that the joint could be formed by "any means known in the art", and not every known joint structure would necessarily meet the release strength limitation. The Board found that several types of joints specifically disclosed in the reference were identical to the types of joints in the Applicant's spec, so the Examiner's presumption of inherency was proper. Since the Applicant didn't rebut this presumption, the Board affirmed the inherency rejection. (Ex parte Almberg, PTAB 2012.)

Details:

Ex parte Almberg
Appeal 2010005008; Appl. No. 10/684,585; Tech. Center 3700
Decided:  March 23, 2012

The application on appeal was directed to a belted absorbent article. A representative claim read:

     A belted absorbent article comprising:
     an absorbent structure ... and
     a pair of opposed belt halves comprising nonwoven material attached to said absorbent structure at said rear end region of said rear panel,
     each of said belt halves being attached by a respective joint ...
     wherein each of said joints between each said belt half and said absorbent structure is such that when each said belt half is subjected to a tension force of 35 N acting along said longitudinal axis of the belt, and said longitudinal axis of the belt creates an angle (a) to said transverse axis of said absorbent structure, the following minimum average release times (t) of each said belt half from said absorbent structure are attained:
     when a = 10°, t >= 720 seconds; when a = 20°, t >= 330 seconds; when a = 25°, t >= 240 seconds; when a = 30°, t >= 180 seconds; and when a = 40°, t >= 75 seconds.

The Examiner rejected the claim as being anticipated by Ames. The Examiner found that Ames explicitly disclosed all the elements but the claimed release times. However, the Examiner found that Ames inherently disclosed the release properties, because the structure of the belt joint in Ames was the same as the belt joint structure disclosed in Applicant's specification.

In the Appeal Brief, the Applicant argued that Ames' broad teaching about the belt joint was not enough for inherency:

Ames does not disclose any specific structure for joining the belt flaps to the rear of the absorbent article.  The entire disclosure related thereto, as set forth at col. 17, lines 51-53, is that if the belt flaps 62 and 64 are separate elements joined to the diaper 20, they can be joined "by any means as known in the art." In order to rely on the theory of inherency, it must be shown that the recited conditions must be met in each and every instance.  MPEP, section 2112, IV.  Clearly, it must be recognized that all "means as known in the art" will not necessarily satisfy the requirements of the means for joining recited in claim 1. Accordingly, the claimed joint cannot be inherent based on Ames.
(Emphasis in original.)

In the Answer, the Examiner referred to Applicant's disclosure of "materials and structure suitable for forming the belt halves and attaching the belt" and then referred to portions of Ames that "teach similar materials and structures for the belt halves."  More specifically, the Examiner found that:

The belt halves of Ames have the same properties (elasticity, attached along the longitudinal axis, extending outwardly from a longitudinal edge) and is used in the same environment as appellant's outer cover (a belt in an absorbent product).

Because of this similarity in structure, the Examiner concluded that "Ames obviously includes belt halves capable of providing the claimed release times" because inherency case law holds that "when the structure recited in the reference is substantially identical to that of the claims of the instant invention, claimed properties or functions are presumed to be inherent."

In the Response to Arguments section, the Examiner elaborated on his inherency position as follows:

[T]he Examiner has provided technical reasoning which supports the position of inherency. The present application is primarily directed to the joints between the belt halves and the absorbent structure. The application claims when subjected to a certain force, the longitudinal axis of the belt creates an angle, and a certain release time is attained. Ames does in fact cite structure and materials similar to the claimed invention. ...
(Emphasis added, internal citation omitted.)

The Applicant filed a Reply Brief asserting that the Examiner's "technical reasoning" for inherency was insufficient:

The Examiner's allegation [that Ames discloses structures similar to the claimed invention], even if true, does not provide any factual or technical basis for holding that the materials and methods of Ames must necessarily result in the functional properties of the structure that are recited in the present claims.  The Examiner has provided no basis to refute the plain truth that similar materials may be assembled so as to provide a wide range of attributes.
(Emphasis added.)

The Applicant elaborated on this last point, explaining that Ames' failure to provide details about the belt joints undermined an inherency finding:

Ames did not disclose any teaching of a particular manner in which the belts are to be joined to the diaper.  Ames did not disclose any functional properties of the joint.  Consequently, there is no basis to conclude that the functional structural requirements of the present claims are inherent in the disclosure of Ames unless every means of attachment known in the art necessarily produces the required structural properties.  However, such cannot be the case. The conventional materials and methods encompassed by the Ames disclosure could produce very different results depending on the particulars of how the materials were joined.(Emphasis added.)

The Board was not persuaded by the Applicant's arguments, and instead found that the Examiner's reasoning as to inherency had shifted the burden the to Applicant to show that the belt joint in Ames would not necessarily last for the claimed release times.

The Board found that the Applicant's specification described the joint between the belt half and the absorbent structure as using "adhesive bond lines, though any attachment methods, such as thermal or ultrasonic bonding, may be employed."

The Board also found that the portion of Ames relied on by the Examiner disclosed that:

[belt flaps 62 and 64] can be joined [to the diaper 20] by any means as known in the art. Examples of suitable attachment means include adhesive bonding, heat bonding, pressure bonding, ultrasonic bonding, dynamic mechanical bonding or a combination of any of these means or any other means as are known in the art.

The Board noted that "there is no dispute that these two joining methods are the same as Ames' heat bonding and ultrasonic bonding", and framed the issue as follows:

Thus, the question is whether the evidence is sufficient to find that Ames' heat bonded joints or ultrasonic bonded joints would necessarily last, on average, for at least 12 minutes if a 7.8 pound force was applied to the joint at an angle of 10°, etc.

The Board decided that the Examiner had the better argument.

The opposite finding would mean that, on average, prior art diaper joints made by the same heat bonding or ultrasonic bonding method failed in less than 12 minutes, etc. The bald argument that prior art diaper joints generally failed in less than 12 minutes is not credible. Under these circumstances, the rejection's evidence is sufficient to shift the burden to Appellants to prove the contrary. See e.g. Best, 562 F.2d at 1255.

My two cents:  The issue here was a functional limitation (having to do with force needed to release a joint), and whether the joint structure disclosed in the reference inherently met that functional limitation. According to the Applicant, inherency is present only when "each and every instance" of the disclosed structure meets the functional limitation. The Applicant argued that this wasn't the case, since the reference stated that the joint could be formed by "any means known in the art," and not every known joint structure would necessarily meet the release strength limitation.

I was intrigued by the Applicant's line of reasoning, because I have never run across this "each and every instance" requirement for inherency. As far as I can tell, the Applicant was mistaken.

The Applicant did not cite to specific cases. The Applicant cited to an MPEP section on inherency (2112.IV), but I didn't see anything there about "each and every instance." And the Board didn't comment on this specific point, but applied plain vanilla inherency law. The joint structures mentioned in the reference – ones formed by adhesive bond lines, thermal bonding, or ultrasonic bonding – were the same ones that Applicant's spec described as providing the claimed release strength limitation. Because the structures were substantially identical, the release strength limitation was presumed to be inherent in the structures. The Applicant did not rebut this presumption, so the Board found the Examiner's anticipation-by-inherency argument to be persuasive.