Appeal No. 97-1835
Application 08/178,068
USPQ2d 1745, 1749 (Fed. Cir. 1991)). "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." Id. at
____, 49 USPQ2d at 1951 (quoting In re Oelrich, 666 F.2d 578,
581, 212 USPQ 323, 326 (CCPA 1981)).
Claim 1, the independent claim on appeal, includes a
shock absorbing material exhibiting first, second and third
stiffnesses. The material is further defined as having a
first and third stiffness significantly higher than said
second stiffness.
We have carefully reviewed the four references the
examiner has cited as anticipatory. Therein, we find no
express disclosure of appellant's claimed first, second and
third stiffnesses. While we acknowledge that the examiner has
stated that these stiffness properties are inherent in the
references, it is clear that this finding of inherency is
based merely on speculation and conjecture on the part of the
examiner. However, inherency may not be established by mere
possibilities or probabilities. Evidence of inherency must
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