Appeal No. 1998-3426
Application 08/762,204
“over the same frequency range but out of phase with the stringed racquet to damp
vibrations in the racquet,” as required in the claims before us on appeal.
In our opinion, the examiner’s position is totally without support in the applied
reference and is entirely based on speculation and conjecture on the examiner's part.
In this regard, we note that it is well settled that inherency may not be established by
probabilities or possibilities, but must instead be "the natural result flowing from the
operation as taught." See In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326
(CCPA 1981). In the present case, neither the Ross patent nor the examiner provides
an adequate factual basis to establish that the natural result flowing from following the
teachings of that patent would be a vibration damping device like that claimed by
appellants. Accordingly, since all the limitations of appellants’ claims 1 through 10
are not found in Ross, either expressly or under principles of inherency, it follows that
the examiner's rejection of those claims under 35 U.S.C. § 102(b) relying on Ross will
not be sustained.
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