Appeal No. 99-0073 Page 10
Application No. 08/562,166
recognized by persons of ordinary skill. Continental Can Co.
v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749
(Fed. Cir. 1991). As the court stated in In re Oelrich, 666
F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981) (quoting Hansgirg
v. Kemmer, 102 F.2d 212, 214, 40 USPQ 665, 667 (CCPA 1939)):
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. [Citations omitted.] If,
however, the disclosure is sufficient to
show that the natural result flowing from
the operation as taught would result in the
performance of the questioned function, it
seems all to be well settled that the
disclosure should be regarded as
sufficient.
For the reasons discussed above, it is our opinion that
Alston does not disclose, either expressly or under the
principles of inherency, a step of positioning a single
weighted element "on the shin region in a predetermined area
where the tibia is most discernable, wherein said weighted
element is sized to substantially fit within the predetermined
area on the shin region" as required by claim 18.
Accordingly, we are constrained to reverse the rejection of
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