Appeal No. 96-2630
Application No. 08/259,824
Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir. 1984).
In the present case, the examiner concedes that none of the
applied references expressly discloses a tissue sheet having an
“Average Percent Void Area of about 63 or greater” as recited in
the appealed claims via independent claims 23 and 29 (see page 5
in the answer). Nonetheless, the examiner finds that
[i]t is reasonable to expect because of the
high bulk hence low density of these prior
art paper products, that there would be large
total area of unoccupied space or void space
between fibers. Therefore these prior art
high bulk tissue products would reasonably be
expected to inherently have the claimed APVA
[answer, page 5].
Under principles of inherency, when a reference is silent
about an asserted inherent characteristic, it must be 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). As the court 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)):
Inherency, however, may not be established by
probabilities or possibilities. The mere
fact that a certain thing may result from a
11
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007