Appeal No. 96-1605
Application No. 07/887,629
in the primary race. However, as correctly argued by
appellants, the French reference lacks an express disclosure
of pivoting the coin in the primary race to align its leading
edge with the aperture (f). As also correctly argued by
appellants, the French reference additionally lacks an express
disclosure of maintaining a coin in the secondary race in its
substantially on-edge orientation.
Furthermore, neither of the foregoing features in
appellants’ claimed invention appears to be inherent in the
apparatus of the French reference inasmuch as the examiner has
not established that they necessarily flow from the teachings
of the French reference. See Ex parte Levy, 17 USPQ2d 1461,
1464 (Bd. Pat. App. & Int. 1990) and cases cited therein. It
does not necessarily follow from the disclosure in the French
reference that the coin “climbs to the edge (j)” of the
aperture (f), that the coin traveling through the aperture
will be maintained in a substantially on-edge orientation in
the wide channel portion of the secondary race immediately
adjacent to the aperture (f). Mere possibilities or even
probabilities are not enough to establish inherency. See In re
Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981).
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