Appeal No. 97-3998
Application 08/302,168
the barrel/housing (see page 5 in the answer) is not well
founded. 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, 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.
Here, the examiner’s determination that the use of the Pitts
device would include contact between the sheet and the
openings in the housing is unduly speculative.
Thus, Pitts does not meet the particular limitations in
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