Campaign: 2100 Patentability

Title to 2112.V is misleading

The title is "ONCE A REFERENCE TEACHING PRODUCT APPEARING TO BE SUBSTANTIALLY IDENTICAL IS MADE THE BASIS OF A REJECTION, AND THE EXAMINER PRESENTS EVIDENCE OR REASONING TENDING TO SHOW INHERENCY, THE BURDEN SHIFTS TO THE APPLICANT TO SHOW AN UNOBVIOUS DIFFERENCE."

 

This title is misleading because the rejection can also be overcome by rebutting the Examiner's evidence or logic for inherency. See Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (rejecting Examiner's reasoning). In addition, if there is a difference in the inherent feature it shouldn't be necessary to show that the difference is unobvious because that difference would not be inherent.

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Idea No. 163