Application of the “capable of” test when a controller with associated programming is claimed *

USA - June 21 2012
It is firmly rooted that because an apparatus is a structure, an apparatus must be distinguished from prior art on the basis of its structure, and where a prior art structure is inherently “capable of” performing the claimed function of the apparatus, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure.

Board analyzes the role of extrinsic evidence to assert inherent facts not capable of instant and unquestionable demonstration as being well-known in an inherency rejection *

USA - February 10 2012
In Ex parte Erickson, et al. (Appeal 2009-009972 in U.S. application serial no. 10/722,712), the Board of Patent Appeals and Interferences analyzed whether finding an inherent teaching of a claim feature in a prior art reference is proper absent any citation of supporting extrinsic evidence.

Board overturns rejection based on design choice as the basis was rebutted and as not a mere rearrangement of known elements *

USA - September 14 2011
In Ex parte Gunasekar, et al. (Appeal 2009-008345 in U.S. application serial no. 10/903,590), the Board of Patent Appeals and Interferences reviewed assertions that claim features were obvious in view of “official notice” and/or “design choice”.