Appeal No. 1998-2337
Application 08/651,442
generally, In re Salem, 553 F.2d 676, 682-83, 193 USPQ 513, 518-19 (CCPA 1977). In this
respect, if the definition of a term or the meaning of a phrase is not expressly stated, the same can be
construed under the principles of inherency by establishing that the questioned structure or function
would necessarily be present in the disclosure of the reference because inherency is not established by
the “mere fact that a certain thing may result from a given set of circumstances.” In re Oelrich, 666
F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981), quoting Hansgirg v. Kemmer, 102 F.2d 212,
214, 40 USPQ 665, 667 (CCPA 1939). Where “the reference is silent about . . . [an] inherent
characteristic, such gap in the reference may be filled with recourse to extrinsic evidence . . . [which]
must make clear that the missing descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. v.
Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991).
With respect to the requirement in claim 1 that “said reference electrode being a pH sensitive
electrode,” appellants do not dispute that Biles describes the apparatus having a “pH . . . electrode of
conventional construction” but contend that Biles does not disclose that the “pH electrode” is a “pH
sensitive electrode” (brief, page 7). The examiner responds that “it is accepted principle that a pH
electrode measures pH variation because it is responsive (or sensitive) to those variations,” and notes
that appellants do not support their argument that a distinction in fact exists (answer, page 8).
Appellants state in their reply brief that the “probe electrode of Biles, whether it be a pH electrode or
another electrode, is not pH sensitive to the extent that it can be used with a potentiostatic unit to
automatically adjust for pH variations, thereby controlling the desilvering,” pointing to the definitions of
“an electrode and . . . the nature of a glass and hydrogen electrode” as well as “pH” in Hawley’s
Condensed Chemical Dictionary, pp. 455 and 893-94 (11th. ed., 1987), along with the disclosure in
their specification, to support the view that “[a] pH sensitive electrode need not be a pH electrode and a
pH electrode need not be pH sensitive” (pages 2-3).
We find here that in their specification, appellants use the terms “pH sensitive electrode” (page
3, line 34) and “pH electrode” (page 3, line 40), but define the former as “all electrodes which show a
pH dependence, e.g., a glass electrode, a hydrogen electrode, a quinhydrone electrode and an antimony
electrode are useful” (page 4, lines 16-18).
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