Appeal No. 1999-0510
Application No. 08/728,787
shown in the drawings as touching each other, with no space
between them. That one of ordinary skill might realize from
reading appellant’s disclosure that the separator might
possibly contact itself at one or more points when interposed
between layers of articles is not a sufficient indication that
such contact is inherently a part of appellant’s invention.
Cf. In re Winkhaus, 527 F.2d 637, 640, 188 USPQ 129, 131 (CCPA
1975). See also In re DeJarlais, 233 F.2d 323, 329, 110 USPQ
36, 41 (CCPA 1956)("That the claimed invention is inherent
cannot be established by probabilities or possibilities.") In
order for a disclosure to be inherent, the missing descriptive
matter must necessarily be present in the specification such
that one skilled in the art would recognize such a disclosure.
Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159, 47 USPQ2d 1829,
1834 (Fed. Cir. 1998). Here, one of ordinary skill reading
appellant’s original application would not recognize therein a
disclosure of folding the separator device "upon itself," as
claimed.
Since the folded (or folding) "upon itself" limitation is
also found in independent claim 7, that claim, as well as
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