Appeal No. 96-3446
Application 08/327,147
55-56) and therefore would have to stretch over the toes for the inspection thereof.
This stretch would have offered ample stretch for the entire foot to pass therethrough
due to the placement of the opening in the bottom of the foot.
After fully considering the record in light of the arguments presented in appellant's brief and the
examiner's answer, we agree with appellants that the above-quoted limitation concerning the size of the
opening is not inherent in Bounous. We note initially that the examiner's remarks concerning
modifications proposed by Bounous concern the question of whether it would have been obvious to
modify the Bounous stocking, a matter which relates to patentability under
§ 103, rather than § 102. Secondly, in order for a claimed limitation to be anticipated by inherency, it
must be "the natural result flowing from the operation as taught" in the reference and be inevitably
present therein. In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981). In this case,
the fact that the opening of Bounous' stocking is sized to fit over the wearer's toes does not necessarily
mean that it would also be sufficiently large to permit the entire foot of the wearer to pass through, since
the opening would have to stretch to a larger size to fit over the heel than it would to fit over the toes.
Third, we note that Bounous discloses at col. 1, lines 50 to 53 that the stocking's leg and foot portions
are "knit with stretchable yarn to provide a compressible force against the leg and foot of the wearer".
This would militate against the stocking being so loose on the wearer's foot that the opening would fit
over the entire foot.
Rejection (1) will therefore not be sustained.
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