Appeal No. 1997-0085
Application 08/335,892
values within the appealed claim ranges as evidenced by
Example 4 including Table IV on pages 13 and 14 of the subject
specification. Significantly, the examiner has not responded
meaningfully to the appellants' point on this matter.
It is well settled that inherency may not be established
by probabilities or possibilities and that inherency is not
established merely because a certain thing may result from a
given set of circumstances. In re Oelrich, 666 F.2d 578, 581,
212 USPQ 323, 326 (CCPA 1981)(citing Hansgirg v. Kemmer, 102
F.2d 212, 214, 40 USPQ 665, 667 (CCPA 1939)). Under the
circumstances recounted above, it is clear that the record
before us on this appeal reflects that polyethylene
terephthalate printing plates which have not been subjected to
the annealing process disclosed by the appellants, that is,
the plates of the references under consideration, do not
necessarily and inherently possess the appellants' claimed
distortion values.
It follows that we cannot sustain the examiner's § 102
rejection of claims 1-7 and 9-11 as being anticipated by
Martens or his § 102 rejection of claims 1-8, 10 and 11 as
being anticipated by Gibson or Worns.
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