Appeal No. 96-0877
Application 08/123,639
will necessarily and, thus, inherently be imparted to the
valve member 120 because the valve member lies in the path of
the ultrasonic vibrations traveling towards window 140. Since
appellant has not shown that Carey’s transducers are not
inherently capable of performing in the manner broadly claimed
in claim 1, we will sustain the § 103 rejection of claim 1. We
will also sustain the § 103 rejection of dependent claims 2,
3, 8/1 and 9 because the patentability of these claims has not
been argued separately of claim 1. See In re Nielson, 816 F.2d
1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987) and In re
Burckel, 592 F.2d 1175, 1178-79, 201 USPQ 67, 70 (CCPA 1979).
Unlike claim 1, claim 4 requires the oscillator to
perform the function of oscillating (i.e., vibrating) the
leaflet. In Carey’s apparatus, there is no evidence to
indicate that the ultrasonic vibrations produced by
transducers 124 and 126 are of sufficient strength to
necessarily perform this function. As stated in In re Oelrich,
666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981), inherency
may not be established by possibilities or probabilities.
Accordingly, we must reverse the § 103 rejection of claims 4
9
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