Appeal No. 96-3446
Application 08/327,147
invention, either explicitly or inherently." In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429,
1431 (Fed. Cir. 1997). In the present case, the Bounous patent discloses a stocking having an opening
at the lower end surrounded by a collar providing a "mock rib appearance". The purpose of the
opening is to allow inspection of the wearer's toes (col. 1, lines 36 to 50), and consequently the opening
is made to provide "sufficient stretch ... to permit the toe end of the stocking to be removed from the
toes of the wearer so that the toes may pass through the opening for inspection purposes" (col. 3, lines
63 to 67); this is shown in Fig. 6.
Appellant argues that Bounous does not meet the limitation of claims 1 and 6 that the collar
provides an opening sufficient "to permit the entire foot of the wearer to pass through the opening".
Since Bounous does not expressly disclose this limitation, it cannot anticipate claims 1 and 6 unless this
limitation is inherently disclosed. The examiner asserts that it is, stating at pages 4 to 5 of the answer:
It is inherent from the choice of yarns and the construction of the proposed
modifications provided in columns 3 and 4 of Bounous et al., as discussed above, that
the opening would have had sufficient stretch provided to allow the entire foot of the
wearer to pass therethrough.
Also, at pages 10 to 11:
Bounous et al. discloses that the opening size may be made in looser or tighter
configuration according to the end need. This inherently allows the toe opening to be
made with sufficient stretch to fit over the entire foot. The requirement of sufficient
stretch as claimed is understood to provide enough stretch to allow the foot to pass
through the hole without tearing the yarns around or within the hole. This meaning
affords the hole of Bounous et al. to be constructed within the
disclosed method since the opening is positioned rearwardly of the toes (column 1, lines
3
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