Appeal No. 96-2649
Application 08/418,875
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 given set of
circumstances is not sufficient. [Citations omitted.]
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.
In the present case, Portal’s disclosure falls far short of
providing the factual basis required to support the examiner’s
finding that the method described therein necessarily involves an
axial flow of material. While the flow of material in the Portal
method would likely have an axial component, this is not
sufficient to meet the claim 1 limitation requiring flow “in an
axial direction and then in lateral directions.”
We shall not sustain the standing 35 U.S.C. § 103 rejections
of dependent claims 2 through 12, 15 and 18 as being unpatentable
over Portal or the standing 35 U.S.C. § 103 rejections of
dependent claims 24 through 27 as being unpatentable over Portal
in view of Clausen. These rejections must fall because they are
predicated on the examiner’s faulty determination that Portal’s
method meets the foregoing limitation in parent claim 1 requiring
a forced flow of material in an axial direction.
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