Appeal No. 1999-1821 Page 9
Application No. 08/725,335
We agree with the appellant's argument (brief, pp. 11-12)
that the standing 35 U.S.C. § 102(b) rejection of the sole
independent claim on appeal (i.e., claim 32) is unsound
because Johnston does not provide a substantially uniform
force distribution between his first and second connectable
member means (i.e., the mortise a and the tenon b).
The examiner's contention that Johnston's device would
provide, presumably under principles of inherency, a
substantially uniform force distribution between the mortise a
and the tenon b (answer, pp. 8-9) is not well founded. Under
principles of inherency, when a reference is silent about an
asserted inherent characteristic, it must be clear that the
missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so 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
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