Appeal No. 97-2222
Application 08/380,661
that the Atwell’s nail ends are made in a “conventional”
manner which would inherently result in a “slight asymmetric
beveling,” we must point out that inherency may not be
established by probabilities or possibilities (In re Oelrich,
666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981)) and the fact
that a certain thing
may result from a given set of circumstances is not sufficient
to
establish inherency (In re Rijckaert, 9 F.3d 1531, 1534, 28
USPQ2d 1955, 1957 (Fed. Cir. 1993)). Since each and every
element set forth in dependent claims 15 and 17 cannot be
found either explicitly or under the principles of inherency
in Atwell (see Hazani v. Int’l Trade Comm’n, supra), we will
not sustain the examiner's rejection of claims 15 and 17 under
35 U.S.C. 102(b).
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejections.
Claims 15 and 17 are rejected under 35 U.S.C. § 103 as
being unpatentable over Atwell in view of Hallock ’967, Hill
9
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