Appeal No. 1998-1610
Application No. 08/551,319
teach a foam material that arguably performs this function"
(id. at 4).
We cannot support the examiner's position. Inherency may
not be established by probabilities or possibilities. In re
Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981). To
establish inherency, it must be clear that the missing
descriptive matter is necessarily present in the thing
described in the reference. Continental Can Co. v. Monsanto
Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir.
1991). In this case,
the disclosure of the reference itself precludes a finding
that
the void or passageway sides in Spann will necessarily retain
their shape throughout under the compressive weight of an
infant. Spann explicitly discloses that the upstanding
projections A, which form the sides of the voids, may be
depressed as shown in Figure 3 (col. 4, lines 45-49). In
fact, Spann views this independent movement of the projections
as a positive thing because it creates a pumping action which
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