Appeal No. 2000-0526
Application No. 08/818,958
Claim 1 on appeal requires, inter alia, "a gas trap
disposed on said back wall at an opposite end of said body
from said fluid outlet." The gas trap in the syringe of
Farris I, as illustrated in Figures 1-4, is disposed on a side
(peripheral) wall 12d rather than the back (rear) wall 12a.
The examiner's position that Farris I anticipates the subject
matter of claim 1 is that
Farris, however, discloses (4:39-46) that it will be
recognized that the air trap can be positioned in
various locations and can have various shapes. It
is considered inherent that this includes the back
wall of the device [answer, page 5].
As pointed out above, under principles of inherency, when
a reference is silent about an asserted inherent
characteristic (in this case, positioning of the gas trap on
the rear wall 12a), 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., 948 F.2d at
1268, 20 USPQ2d at 1749). 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)):
14
Page: Previous 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 Next
Last modified: November 3, 2007