Appeal No. 1998-2794 Page 5
Application No. 08/506,137
it less extensible. By stiffening, we understand Foreman to mean reduction of the flexibility or
bendability of the barrier cuff in a direction toward and away from the topsheet, or generally
perpendicular to its inboard and outboard faces, so that it will retain an orientation in which it is
angled upwardly away from the topsheet. While we understand that it may be possible to apply
a stiffening means such that it also restrains the extensibility of the barrier cuff in its x-y plane,
Foreman does not require this. As for shortening, it is not apparent to us how a shortening of4
the barrier cuff will have any impact on its extensibility from that shortened length.
For the foregoing reasons, we are constrained to reverse the examiner's rejection of
claims 1-3 and 5-12 under 35 U.S.C. § 102(b).
Turning next to the examiner's rejection of claims 1-3 and 5-12 under 35 U.S.C. § 103,
as discussed above, we are of the opinion that Foreman does not disclose, expressly or under
principles of inherency, that the barrier cuffs are less extensible than the topsheet. While we
appreciate that it is possible, consistent with the teachings of Foreman, to have constructed the
absorbent article of Foreman so as to possess this feature, the mere fact that the prior art could
be so modified would not have made the modification obvious unless the prior art suggested the
Under principles of inherency, when a reference is silent about an asserted inherent characteristic, it4
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. v. Monsanto Co., 948 F.2d 1264,
1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991). Inherency 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. In re Oelrich, 666
F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981).
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