Appeal No. 97-2783
Application 08/388,089
agreement with appellants that Morscher fails to disclose, teach
or suggest the limitation of independent claims 1 and 15
regarding the penetration of the polymeric material of the cup
into the pores of the backing as required in these claims, so as
to result in "an interface strength between said polymeric cup
and said backing which is substantially equal to the tensile
strength of said polymeric material." Even the examiner
recognizes (answer, page 3) that Morscher does not disclose or
explicitly state the tensile strength of the interface between
the cup and the backing therein, or the depth of penetration of
the polymeric material of the cup into the pores of the backing.
The examiner's conclusion that this aspect of appellants' claimed
subject matter and the specific level of penetration set forth in
independent claim 13 (i.e., a distance of at least 0.05 inch)
"would be inherent" in Morscher is totally without support in the
reference and is entirely speculative on the examiner's part.
It is well settled that inherency may not be established by
probabilities or possibilities, but must instead be "the natural
result flowing from the operation as taught." See In re Oelrich,
666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981). In the
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