Appeal No. 1999-0242
Application 08/643,829
221 USPQ 385, 388 (Fed. Cir. 1984). Under principles of
inherency, when a reference is silent about an asserted
inherent characteristic, it
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). As the court
stated in In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326
(CCPA 1981)(quoting Hansgirg v. Kemmer, 102 F.2d 212, 214, 40
USPQ 665, 667 (CCPA 1939)):
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. [Citations
omitted.] If, however, the disclosure is sufficient
to show that the natural result flowing from the
operation as taught would result in the performance
of the questioned function, it seems to be well
settled that the disclosure should be regarded as
sufficient.
As indicated above, the examiner considers the opposing
flat surfaces on Sackett’s extension 54 and recess 56 to meet
the limitations in claim 28 pertaining to the coupling member
flat mating surface and the foot member flat mating surface,
respectively. Sackett, however, is silent as to whether these
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