Appeal No. 1998-1329
Application 08/642,595
Examiner as to the obviousness of using a molding process, in
the formation of Lo’s sanitary cover. To establish inherency,
evidence must make clear that the missing descriptive matter
is necessarily present in the thing described in the reference
and would be recognized as such by persons of ordinary skill.
In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51
(Fed. Cir. 1999) citing Continental Can Co. v. Monsanto Co.,
948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991).
“Inherency, however, may not be established by probabilities
or possibilities. The mere fact that a certain thing may
result from a given set of circumstances is not sufficient.”
Id. citing Continental, 948 F.2d at 1269, 20 USPQ2d at 1749.
We also find the Examiner’s further assertions (Answer,
pages 8 and 9) as to the inherency of “uneven tension” between
the two layers of Lo’s cover to be unfounded. The Examiner
draws attention to the Figure 4 illustration in Lo which shows
a sharp cut at the periphery of the cover. From this
illustration, the Examiner draws the conclusion that, since
the layers are wrapped within each other to produce the sharp
cut, the outer layer must be larger than the inner layer which
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007