Appeal No. 1998-0832
Application 08/496,760
would inherently occur when the modified neck member of the APA
was joined to the sleeve.
Unpatentability based on inherency of a claim limitation in
the prior art is only established if the limitation would
necssarily be present in the prior art, and would be so
recognized by persons of ordinary skill. The mere fact that a
certain thing may result from a given set of circumstances is
insufficient. Electro Medical Sys., S.A. v. Cooper Life
Sciences, Inc., 34 F.3d 1048, 1052, 32 USPQ2d 1017, 1020 (Fed.
Cir. 1997); In re Oelrich, 666 F.2d 578, 581,
212 USPQ 323, 326 (CCPA 1981). In the present case, we do not1
consider that the final step of claim 8 would inherently be met
by the combination of the APA and Uba or Stolzman, for even if
the excess material of the melted rib would necessarily go into
the void, as the examiner maintains, it would not necessarily
fill the void and seal the sleeve member and shoulder member
together, as claim 8 requires. As appellant argues on page 6 of
the brief, “there is no teaching in [Uba or Stolzman] to size the
1 Although these cases concern anticipation under §
102(b) rather than obviousness, the question of inherency
arises both in the context of anticipation and obviousness.
In re Napier,
55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995).
4
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