Appeal No. 96-3130
Application 08/225,653
the examiner contends. Indeed, the appellants characterize the
leading edge of their protuberance to be a "knife edge" and,
thus, it appears that their leading edge would be more of a
"fairing" than the leading edge of Sperry.
The appellants also rely on decisions such as In re
Spormann, 363 F.2d 444, 150 USPQ 449 (CCPA 1966) and In re
Newell, 891 F.2d 899, 13 USPQ2d 1248 (Fed. Cir. 1989) as
authority for the notion that reliance on inherency is improper
in the present case. We must point out, however, this is not an
instance wherein the examiner concluded that the reference (i.e.,
Sperry) inherently performs the function and then utilized this
"inherent function" as a basis for modifying or combining the
teachings of the references. Here, the structure of Sperry4
appears to inherently perform the function in question with no
modification whatsoever. Moreover, as we have noted above, ample
motivation for combining the teachings of the references is
present separate and apart from the inherent function in
question. It should also be noted that the principle of
inherency is equally applicable to a rejection based on
4 Although the examiner has relied on the combined teachings of Piatti
and Sperry, it appears to us that there is response in Sperry alone for all the
limitations as broadly set forth in claim 28.
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