Appeal No. 1996-2735
Application 08/322,741
present in menstrual fluid, as described in the claims before us, we do not find this
teaching sufficient to establish a prima facie case of anticipation because the use of the
device disclosed by Tanzer does not manifestly result in the contacting of menstrual fluid
with the deodorizing material. Thus, we do not find that in following the teachings of
Tanzer, one would inherently perform the claimed method and that the claimed
precipitation event would occur. Inherency must be established by more than mere
probability or possibility. In re Robertson, 169 F.3d at 745, 49 USPQ2d at 1951;
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749
(Fed. Cir. 1991).
We also point out that all the claims state that the “salt is proximate to the body
facing surface” of the catamenial device. In amending the claims to include this phrase the
appellant stipulated that “When the salts of the invention are proximate [to] the body facing
surface of the catamenial device, they will immediately contact any menstrual fluid which is
absorbed by the catamenial device and thus react with the magnesium and/or calcium in
the menstrual fluid to form a precipitate thereby preventing the formation of odors.”
[Emphases added]. Paper No. 28, sentence bridging pp. 3-4. In contrasting the present
device from the devices described by Tanzer, the appellant stated that “the salts of the
present invention are placed in the catamenial device, proximate to the body-facing
surface, so that they can contact the menstrual fluid, and chemically interact with the odor-
causing magnesium and calcium cations contained therein.” Id., p. 4, second complete
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