Appeal No. 2001-0373 Page 4
Application No. 09/122,255
(quoting Hansgirg v. Kemmer, 102 F.2d 212, 214, 40 USPQ 665,
667 (CCPA 1939)) (internal citations omitted):
Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a
certain thing may result from a given set of
circumstances is not sufficient. If, however, the
disclosure is sufficient to show that the natural result
flowing from the operation as taught would result in the
performance of the questioned function, it seems to be
well settled that the disclosure should be regarded as
sufficient.
Thus, a prior art reference may anticipate when the claim
limitation or limitations not expressly found in that
reference are nonetheless inherent in it. See In re Oelrich,
666 F.2d at 581, 212 USPQ at 326; Verdegaal Bros., Inc. v. Union
Oil Co., 814 F.2d 628, 630, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987).
Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations,
it anticipates. See In re King, 801 F.2d 1324, 1326, 231 USPQ 136,
138 (Fed. Cir. 1986). However, inherency is not necessarily
coterminous with the knowledge of those of ordinary skill in
the art. See Mehl/Biophile Int'l Corp. v. Milgraum, 192 F.3d
1362, 1365, 52 USPQ2d 1303, 1305-06 (Fed. Cir. 1999); Atlas
Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943,
1946-47 (Fed. Cir. 1999).
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