Appeal No. 96-2501
Application 08/177,243
Examining Procedure (Rev. 2, July 1996) at § 2173.05(g), there is
nothing inherently wrong with defining some part of the invention
in functional terms, and such functional limitations must be
evaluated just like any other limitation of the claim. As for
the examiner's position concerning what might be "conceivable
. . . under some circumstances and/or operating conditions"
(answer, page 12), we must point out that inherency cannot be
established by possibilities or probabilities, but instead, the
disclosure relied upon must be sufficient to show that the
natural result flowing from the teachings of the applied
reference would result in the claimed subject matter. See In re
Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981) and
Hansgirg v. Kemmer, 102 F.2d 212, 214, 40 USPQ 665, 667 (CCPA
1939), cited therein. We find nothing in the disclosure of
Schulz, Doom or Kao which would provide any reasonable
expectation that any mixing apparatus therein has the capability
of passing therethrough solid matter having a diameter of at
least 75% of the diameter of said conduit, as required in
appellant's claim 6 on appeal.
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