## Facts

- Patent applicants sought claims to a disposable diaper “mechanical fastening system” intended to allow both side closure during wear and securement in a rolled-up disposal configuration after use.
- Claim 76 recited: (1) a first mechanical fastening means (first fastening element) on a closure member; (2) a second mechanical fastening means (second fastening element) on a landing member engageable with the first element to form side closures; and (3) disposal means comprising a third mechanical fastening means (third fastening element) engageable with the first fastening element to secure the diaper in a disposal configuration.
- A prior art diaper patent disclosed two sets of mating fasteners at the hip areas used to fasten the diaper on the wearer, and described disposal by folding the diaper and fastening a rear pair of mating fasteners to bundle the garment.
- A PTO examiner rejected claim 76 as anticipated under 35 U.S.C. § 102 and obvious under 35 U.S.C. § 103 over the prior art reference.
- The Board affirmed, reasoning that although the prior art described only two fastening means, those fasteners were inherently capable of performing the claimed disposal function and therefore satisfied the “third mechanical fastening means.”
- The applicants appealed to the Federal Circuit.

## Issues

1. Whether the prior art anticipated claim 76 under § 102 by inherency because its disclosed fasteners were capable of securing the diaper for disposal, allegedly satisfying the claimed third mechanical fastening means.
2. Whether claim 76 was obvious under § 103 in view of the prior art where the agency’s rationale effectively treated the claimed third fastening means as the same structure as the closure fasteners.

## Decision

- The Federal Circuit reversed the Board.
- The court held there was no anticipation because the prior art did not expressly disclose, and did not inherently contain, the claimed third, distinct mechanical fastening means.
- The court also set aside the obviousness rejection because the agency’s conclusion lacked substantial evidence that a skilled artisan would have been motivated to modify the prior art to include the claimed structurally distinct third fastener engaging the first fastening element.

## Legal Principles

- Inherency in anticipation requires that the claimed feature be necessarily present in the prior art; mere capability or a speculative possibility that the prior art could perform the function is insufficient.
- For apparatus claims, a prior art device is not anticipatory solely because it can be operated to perform the recited functions if the claim includes a structural limitation not disclosed in the prior art.
- Functional language in an apparatus claim may still impose structural requirements; when a claim requires a separate fastening element, that structural distinctness must be found in the prior art to support anticipation.
- An obviousness determination must be supported by substantial evidence, including a reason to modify the prior art to arrive at the claimed structure rather than collapsing distinct claimed elements into existing components.

## Conclusion

The court rejected the PTO’s attempt to use inherency to treat a two-fastener prior art diaper as having the claimed third, separate disposal fastener, holding that inherency demands necessity and that structural differences defeat anticipation; it also found the obviousness rejection unsupported where the record did not justify modifying the prior art to add the distinct third fastening means required by the claim.


In re Robertson, 169 F.3d 743 (Fed. Cir. 1999)