Appeal No. 1999-0406
Application 08/484,019
the limitations in question. 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 to be well
settled that the disclosure should be regarded as
sufficient.
Thus, Friedheim ‘037 does not meet all of the limitations
in claims 1, 14 and 29. Accordingly, we shall not sustain the
standing 35 U.S.C. § 102(b) rejection of these claims or of
claims 2, 4, 11, 15, 16, 25, 28, 30, 31 and 41 which depend
therefrom.
In addition to not teaching vapor generator holes having
a substantially circular or regular cross-sections, Friedheim
‘037 would not have suggested such holes to one of ordinary
skill in the art. Therefore, we shall not sustain the
standing 35 U.S.C. § 103(a) rejection of claims 27 and 40,
which depend from claims 14 and 29, respectively, as being
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