Appeal No. 96-2649
Application 08/418,875
having integral exterior protrusions comprising, inter alia, the
step of subjecting a hollow element to deformation pressure by
sequentially forcing a member through its interior and thereby
causing a non-elastic forced flow of material “in an axial
direction and then in lateral directions” outwardly into voids in
a die. The appellant’s contention that the method disclosed by
Portal fails to meet this limitation (see pages 12 through 15 in
the main brief and pages 3 through 5 in the reply brief) is well
taken. Portal’s description of this method makes no mention of a
forced flow of material in an axial direction. Indeed, it is
clearly Portal’s intention to eliminate such axial flow. In this
light, the examiner’s finding that Portal’s step of “forcing the
material outwardly into the fin grooves of the die would
necessarily require axial flow of the material in the wall zone
between the fin grooves” (final rejection, page 2) is unduly
speculative. 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,
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