In Re Albert M.A. Rijckaert & Joannes A.E. Van Der Kop, 9 F.3d 1531 (Fed. Cir. 1993). · Go Syfert
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In Re Albert M.A. Rijckaert & Joannes A.E. Van Der Kop, 9 F.3d 1531 (Fed. Cir. 1993). Cases Citing This Book View Copy Cite
35 citation events (18 in the last 25 years) across 5 distinct courts.
Strongest positive: Apple Inc. v. Uniloc 2017 LLC (cafc, 2021-02-09)
Treatment trajectory · 1994 → 2026 · click a year to view as-of
1994 2010 2026
Statutes interpreted (leading-cases list)
#15 37 C.F.R. § 1.196 cited 1× in this case · 42 total citations of statute
Top citers, strongest first. 18 distinct citers. How cited ↗
discussed Cited as authority (rule) Apple Inc. v. Uniloc 2017 LLC
Fed. Cir. · 2021 · confidence medium
“The mere fact that a certain thing may result from a given set of circumstances is not sufficient [to establish Case: 19-1151 Document: 80 Page: 12 Filed: 02/09/2021 12 APPLE INC. v. UNILOC 2017 LLC inherency.]” In re Rijckaert, 9 F.3d 1531, 1534 (Fed.
discussed Cited as authority (rule) Pernix Ir. Pain Dac v. Alvogen Malta Operations Ltd.
D. Del. · 2018 · confidence medium
In Rijckaert , the Federal Circuit reversed an obviousness rejection based on inherency because the allegedly inherent property was based on the optimization of the product, not on a necessarily present property that was found in the prior art. 9 F.3d at 1533-34 ("To support the Board's affirmance of the rejection, the Commissioner points out that in the recording art, the exact matching of signal time to recording time is an optimal condition, and that this condition would be met by fulfilling the claimed relationship.
discussed Cited as authority (rule) Southwire Company v. Cerro Wire LLC
Fed. Cir. · 2017 · confidence medium
We have held that “the use of inherency in the context of obviousness must be carefully circumscribed because ‘[t]hat which may be inherent is not necessarily known’ and that which is unknown cannot be obvious.” Honeywell Int’l v. Mexichem Amanco Holding S.A., 865 F.3d 1348, 1354 (Fed. *1311 Cir. 2017) (quoting In re Rijckaert, 9 F.3d 1531, 1534 (Fed.
discussed Cited as authority (rule) Honeywell International Inc. v. Mexichem Amanco Holding S.A. De C.V. (2×)
Fed. Cir. · 2017 · confidence medium
In re Rijckaert, 9 F.3d 1531, 1534 (Fed.
discussed Cited as authority (rule) Institut Pasteur & Universite Pierre Et Marie Curie v. Focarino
Fed. Cir. · 2013 · confidence medium
Nowhere else does the reference clarify what is meant by- cleaving “an artificially placed site within the nucleus.” As the PTO bears the burden of demonstrating a prima facie case of obviousness, see, e.g., In re Rijckaert, 9 F.3d 1531, 1532 (Fed.Cir.1993), Dujon’s language is insufficient to establish that the GIIE endonuclease targeted chromosomal DNA.
discussed Cited as authority (rule) In re AndroGel Antitrust Litigation (No. II)
N.D. Ga. · 2012 · confidence medium
In the obviousness context, inherent properties of prior art are relevant only where “that inherency would have been obvious to those skilled in the art when the invention ... was made.” Kloster Speedsteel AB v. Crucible Inc., 793 F.2d 1565, 1576 (Fed.Cir.1986); see also Donald S. Chichisum on Patents § 5.03[3][a][i][A] (“An inherent feature may be relied upon to establish obviousness only if the inherency would have been obvious to one of ordinary skill in the art.”); In re Rijckaert, 9 F.3d 1531, 1534 (Fed.Cir.1993) (quoting In re Spormann, 53 C.C.P.A. 1375 , 363 F.2d 444, 448 , 150…
discussed Cited as authority (rule) Callaway Golf Co. v. Acushnet Co.
D. Del. · 2007 · confidence medium
Defendant must put forward evidence that tends to demonstrate that persons of ordinary skill in the art had knowledge that combining these references would result in an “on the ball” Shore D hardness of less than 64, and some motivation to combine the references to provide this result. 18 See In re Rijckaert, 9 F.3d 1531, 1534 (Fed.Cir.1993) (“That which may be inherent is not necessarily known.
cited Cited as authority (rule) NOVAMEDIX DISTRIBUTION LTD. v. Dickinson
D.D.C. · 2001 · confidence medium
In re Rijckaert, 9 F.3d 1531, 1532 (Fed.Cir.1993).
cited Cited as authority (rule) In Re Isao Ona, Osamu Tanaka, and Hidetoshi Kurusu
Fed. Cir. · 1995 · confidence medium
In re Rijckaert, 9 F.3d 1531, 1532 , 28 USPQ2d 1955, 1956 (Fed.
cited Cited as authority (rule) In Re Ken W. Donbar, William M. Saltman and Morford C. Throckmorton
Fed. Cir. · 1995 · confidence medium
In re Rijckaert, 9 F.3d 1531, 1532 , 28 USPQ2d 1955, 1956 (Fed.
discussed Cited as authority (rule) In Re Thomas F. Deuel, Yue-Sheng Li, Ned R. Siegel and Peter G. Milner (2×)
Fed. Cir. · 1995 · confidence medium
In re Rijckaert, 9 F.3d 1531, 1532 , 28 USPQ2d 1955, 1956 (Fed.Cir.1993); In re Oetiker, 977 F.2d 1443, 1445 , 24 USPQ2d 1443, 1444 (Fed.Cir.1992).
discussed Cited "see" Inre: Giannelli
Fed. Cir. · 2014 · signal: see · confidence high
See In re Rijckaert, 9 F.3d 1531, 1532 (Fed.Cir.1993) (“Only if that burden [of establishing a prima facie case] is met, does the burden of coming forward with evidence or argument shift to the applicant.”).
cited Cited "see" In Re Conrad Oliver Gardner
Fed. Cir. · 2011 · signal: see · confidence high
See In re Rijckaert, 9 F.3d 1531, 1532 (Fed.Cir.1993).
cited Cited "see" Biacore, AB v. Thermo Bioanalysis Corp.
D. Del. · 1999 · signal: see · confidence high
See In re Rijckaert, 9 F.3d 1531, 1534 (Fed.Cir.1993); In re Oelrich, 666 F.2d 578, 581 (C.C.P.A.1981).
discussed Cited "see" Rohm and Haas Co. v. Lonza, Inc.
E.D. Pa. · 1999 · signal: see · confidence high
See In re Rijckaert, 9 F.3d 1531, 1534 (Fed.Cir.1993) (“The mere fact that a certain thing may result from a given set of circumstances is not sufficient [to establish inherency].” (alteration in original) (quoting In re Oelrich, 666 F.2d 578, 581-82 (C.C.P.A.1981))).
examined Cited "see" In Re Pravin L. Soni, Ceinwen Rowlands, Larry Edwards and Mark Wartenberg (4×)
Fed. Cir. · 1995 · signal: see · confidence high
See In re Rijckaert, 9 F.3d 1531, 1532 , 28 USPQ2d 1955, 1956 (Fed.Cir.1993) (prima facie case of obviousness shifts burden to applicant to come forward with rebuttal evidence or argument). 22 The references cited describe relevant compositions containing polyethylene and a conductive filler.
discussed Cited "see, e.g." Persion Pharmaceuticals LLC v. Alvogen Malta Operations Ltd.
Fed. Cir. · 2019 · signal: see also · confidence low
Inherency “may not be established by probabilities or possibilities,” and “[t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Oelrich, 666 F.2d at 581 (emphasis added) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214 (C.C.P.A. 1939); see also In re Rijckaert, 9 F.3d 1531 , 1533– 34 (Fed.
discussed Cited "see, e.g." Par Pharmaceutical, Inc. v. Twi Pharmaceuticals, Inc.
Fed. Cir. · 2014 · signal: see, e.g. · confidence medium
See, e.g., In re Rijckaert, 9 F.3d 1531, 1533-34 (Fed.Cir.1993) (“The mere fact that a certain thing may result from a given set of circumstances is not sufficient [to establish inherency].” (internal quotation omitted)); In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981) (“[M]ere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not distinguish a claim drawn to those things from the prior art.”); Application of Shetty, 566 F.2d 81, 86 (C.C.P.A. 1977) (“ ‘[T]he inherency of an advantage and its obviousness are entirely differ…
Retrieving the full opinion text from the archive…
In Re Albert M.A. RIJCKAERT and Joannes A.E. Van Der Kop
93-1206.
Court of Appeals for the Federal Circuit.
Nov 23, 1993.
9 F.3d 1531
Edward W. Goodman, North American Philips Corp., of Tarrytown, NY, argued for appellant. With him on the brief was Algy Tamoshunas., Lee E. Barrett, Associate Sol., Office of the Sol., Arlington, VA, argued for appellee. With him on thé brief was Fred E. MeKel-vey, Sol.
Mayer, Lourie, Lay.
Cited by 23 opinions  |  Published
LOURIE, Circuit Judge.

Albert Rijckaert and Joannes van der Kop (“Rijckaert”) appeal from the decision of the United States Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences affirming the final rejection of claims 5-12, all of the pending claims in patent application serial no. 07/345,396, as being un-patentable under 35 U.S.C. § 103 (1988). Because the references relied upon to reject[*1532] the claims do not provide the basis for a prima facie determination that the claimed invention would have been obvious, we reverse.

BACKGROUND

The patent application at issue relates to an apparatus for recording and reproducing an electric signal on a magnetic record carrier. Independent claim 11 is drawn to a recording apparatus and it specifies a relationship between time expansion or compression and three variables, a, n, and M. Claim 11 reads, in pertinent part:

11. An apparatus for recording an electric signal on a magnetic record carrier in tracks which are inclined relative to the longitudinal direction of said record carrier, comprising: ...
... [a] time-base correction circuit providing] a time expansion or time compression of the signal blocks by a factor of a*n/(180*(M + l)), where a is the wrapping angle of the record carrier around the head drum and differs from 180°, n is the number of head pairs, and M is the number of times within a specific time interval that a head pair which comes in contact with the record carrier during said time interval does not record a signal on the record carrier, said time interval being defined by those instants at which two consecutive track pairs are recorded by one or two head pairs.

Independent claim 12 is drawn to an apparatus for reproducing a recorded signal and it recites the reciprocal relationship between time compression or expansion and the three variables a, and M. Dependent claims 5-10 further limit claims 11 or 12.

The Board upheld the final rejection of claims 5 and 7-12 under 35 U.S.C. § 103 as being unpatentable over U.S. Patent 4,757,-392 to Awamoto in view of Driessen et al., An Experimental Digital Video Recording System, CE-32 I.E.E.E. Transactions on Consumer Electronics 3, Aug. 1986, at 362-70. The Board also upheld the final rejection of claim 6 as being unpatentable over Awamoto and Driessen in view of U.S. Patent 4,542,417 to Ohta.

DISCUSSION

We review de novo the Board’s ultimate determination of obviousness. In re De Blauwe, 736 F.2d 699, 703, 222 USPQ 191, 195 (Fed.Cir.1984). Underlying factual inquiries, such as the scope and content of the prior art, differences between the prior art and the claimed invention, and level of ordinary skill in the art are reviewed for clear error. See In re Caveney, 761 F.2d 671, 674, 226 USPQ 1, 3 (Fed.Cir.1985).

In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.Cir.1992). Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant. Id. “A prima facie case of obviousness is established when the teachings from the prior art itself would appear to have suggested the claimed subject matter to a person of ordinary skill in the art.” In re Bell, 991 F.2d 781, 782, 26 USPQ2d 1529, 1531 (Fed.Cir.1993) (quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)). If the examiner fails to establish a prima facie case, the rejection is improper and will be overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed.Cir.1988).

All of the claims except claim 6 stand rejected under 35 U.S.C. § 103 as being obvious over Awamoto in view of Driessen. [1] Awamoto, the primary reference, discloses a signal processing circuit for a video recording and reproducing apparatus. Awamoto specifically discloses the time expansion of an input signal by a factor of two and the corresponding time compression of an output signal in a manner inverse to that of the time expansion. Further, Awamoto uses two video heads mounted on a rotary dram “of any[*1533] of a well known video tape loading mechanism such that [the heads] follow parallel tracks skewed relative to the length of video tape.” Driessen discloses a recording system using two pairs of heads mounted on piezo-ceramic actuators.

The Board concluded that the subject matter of the claims would have been obvious over Awamoto in view of Driessen, stating that “the time expansion or time compression relationship is satisfied for the expansion of two disclosed [in] Awamoto when a wrapping angle of 360°, one pair of heads and no non-recording intervals are assumed.” The Board further asserted that the recognition of the claimed relationship between time expansion/compression and the three variables a, n, and M is “the mere discovery of a relationship that is applicable to [a] prior art apparatus[, and] does not [give] rise to a patentable invention.” Thus, in affirming the rejection, the Board first assumed that the claim limitation at issue, the relationship between time expansion/compression and the three variables, was somehow “inherent” in the prior art as shown by Awamoto. The Board also assumed specific values for the claimed variables in order to assert that Awamoto’s device satisfies the claimed relationship.

Rijckaert argues that the examiner has not established a prima facie case of obviousness and that the examiner’s assumptions do not constitute the disclosure of prior art. We agree. Awamoto does not disclose the wrapping angle of the record carrier around the head drum or the number of times that a head pair which comes in contact with the record carrier does not record a signal on the record carrier. Nor does Awamoto discuss the claimed relationship of the three varia-

bles to time expansion/compression. [2] Dries-sen, the secondary reference, is relied upon only to teach the provision of a pair of write heads having a mechanically rigid coupling to each other and does not remedy the deficiencies of Awamoto. Thus, the prior art relied upon does not disclose, suggest, or render obvious the claimed invention, either individually or when combined. [3]

Awamoto does not describe the use of time expansion and compression as a means of optimally filling tracks, much less suggest that the three variables of the claims are even a factor in determining the amount of time expansion or time compression. Rather, Awamoto is concerned primarily with processing a high-quality broadcast television signal for use in conventional video machinery, and with compensating for errors introduced to such a signal by a transfer circuit. The Commissioner’s assertion “that the [analysis discussed in his brief] and Awamoto demonstrate that the relationship was, in fact, well known in the art” is unavailing. While the court appreciates the Commissioner’s thorough explanation of the claimed relationship in his brief, the Commissioner’s brief is not prior art. The prior art is Awamoto, and it does not indicate that the relationship is well known in the art, nor does it suggest the claimed relationship. See In re Yates, 663 F.2d 1054, 211 USPQ 1149, 1151 (COPA 1981) (when the PTO asserts that there is an explicit or implicit teaching or suggestion in the prior art, it must indicate where such a teaching or suggestion appears in the reference).

To support the Board’s affirmance of the rejection, the Commissioner points out that in the recording art, the exact matching of signal time to recording time is an optimal[*1534] condition, and that this condition would be met by fulfilling the claimed relationship. While the condition described may be an optimal one, it is not “inherent” in Awamoto. Nor are the means to achieve this optimal condition disclosed by Awamoto, explicitly or implicitly. “The mere fact that a certain thing may result from a given set of circumstances is not sufficient [to establish inheren-cy.]” In re Oelrich, 666 F.2d 578, 581-82, 212 USPQ 323, 326 (CCPA 1981) (citations omitted) (emphasis added). “That which may be inherent is not necessarily known. Obviousness cannot be predicated on what is unknown.” In re Spormann, 363 F.2d 444, 448, 150 USPQ 449, 452 (CCPA 1966). Such a retrospective view of inherency is not a substitute for some teaching or suggestion supporting an obviousness rejection. See In re Newell, 891 F.2d 899, 901, 13 USPQ2d 1248, 1250 (Fed.Cir.1989).

Rijckaert also argues that the rejection of dependent claim 6 as being obvious over Awamoto and Driessen in view of Ohta is improper. Ohta discloses an apparatus for compensating for signal loss in a single-head video recorder using a time compression factor of 3/5 (a signal of time period 5t/4 is compressed into a track of time period 3t/4) so that a signal is recorded completely during the time period that it takes the recording head to scan the magnetic tape. Regarding the Ohta patent, the examiner stated, “Ohta was only relied upon to support the idea that other compression factors are used in the prior art_” [4] The relationship between the time expansion/compression and the three variables recited in the claims from which claim 6 depends, which is absent in the combination of Awamoto and Driessen, is not supplied by Ohta. Thus, we agree that the rejection of claim 6 under § 103 is improper for the reasons set forth above with respect to the other claims.

While the Commissioner criticizes Rijck-aert’s arguments regarding the § 103 rejections, the burden to rebut a rejection of obviousness does not arise until a prima facie case has been established. In the case before us, it was not.

CONCLUSION

The decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences affirming the final rejection is reversed.

REVERSED.

1

. The claims stand or fall together since no separate argument for patentability has been made for each claim.

2

. The Commissioner admits that other limitations recited in claims 11 and 12 are not found in Awamoto; however, those limitations were not argued before the Board or this court. Thus, we agree with the Commissioner that those limitations are not at issue here.

3

. The Board also noted that the claims are not "specific” in that they claim the three variables as a "factor” of the expansion or compression time. The Board stated, "claims 11 and 12 fail to say which of expansion time or compression time is factored by the variables, how or when one of the two times is selected based on the variables or how each of the two times is related to the variables.” The Board further stated, “the relationship is probably satisfied by any prior art video tape recording and reproducing apparatus that otherwise satisfies the remaining requirements of the claims at bar.” While the Board's position implies a possible rejection based upon 35 U.S.C. § 112, this issue is not before us. In any event, the statement that the relationship is "probably satisfied” by the prior art is speculative and therefore does not establish a prima facie case of unpatentability.

4

. The Board did not specifically address the rejection of claim 6; therefore, claim 6 was considered to be affirmed for the reasons stated by the examiner. See 37 C.F.R. § 1.196(a) (1993).