Appeal No. 2003-1332 Page 10
Application No. 09/797,143
such a modification of Gu would not necessarily arrive at the claimed invention. In that
regard, the examiner has not established1 that the poppet valve heads made from the
steel materials as suggested and taught by Danis or Kloske would inherently be
increasingly conformable to the valve seat by wear of the valve head through
repeated contacts with the valve seat, the repeated contacts causing a contact surface
of the valve head to achieve an increasingly smoother surface finish as a result of
the wear. In our view, the mere fact that both Danis and Kloske disclose steels starting
with a carbon content of 0.5% or less and a Rockwell Hardness of about 50 or less
does not naturally result in the claimed functions (i.e., increasingly conformable and
increasingly smoother surface finish).
For the reasons set forth above, the decision of the examiner to reject claims 15
to 20 under 35 U.S.C. § 103 is reversed.
1 As stated in 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)) (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.
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