Appeal No. 2001-2378
Application No. 09/479,932
of ordinary skill in the art would readily understand and be
able to determine for a particular rail. Our view in this
regard is supported by appellants’ specification.3
Third, the examiner’s position that the claimed
relationship between the maximum stress level of the rail and
the rigidity of the intermediate layer (claims 1 and 12) or
function of the decoupling means (claim 15) are inherent
characteristics of Meier is speculative. Meier does not
disclose or teach either of these relationships. In fact,
Meier does not even mention the maximum stress level of the
rail. While it is possible that the elastic properties of
part 5 of Meier might be related to the maximum stress level
of the rail in the manner called for in the independent claims
on appeal, we note that it is well settled that inherency may
not be established by probabilities and possibilities, but
must instead be “the natural result flowing from the operation
as taught.” See In re Oelrich, 666 F.2d 578, 581, 212 USPQ
323, 326 (CCPA 1981). In the present case, the disclosure of
3See, for example, appellants’ specification at page 4,
lines 17-20; page 9, lines 10-13; page 10, lines 9-11; page
11, lines 9-11.
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