Appeal No. 1999-0941 Page 4
Application No. 08/756,424
of representative claim 31 and treat claims 32-44, 49 and 50 as standing or falling therewith. See In
re Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991); In re Wood, 582 F.2d 638,
642, 199 USPQ 137, 140 (CCPA 1978).
Steere (Figures 14 and 15) discloses a raised pavement marker comprising a top wall (176), a
bottom plate (220) and ribs (172, 173) extending between the top wall and bottom plate. The examiner
finds that Steere discloses a raised pavement marker as recited in claim 31 with the exception that
Steere fails to expressly disclose any "apparent modulus" values. Appellants have not challenged this
assertion and we detect no error in the examiner's finding.
The examiner (answer, page 6) concludes that "it is likely that the marker of [Steere] would
inherently have an 'apparent modulus' greater than 80,000 PSI" on the basis that (1) Steere discloses
acrylic-styrene-acrylonitrile (ASA) as the base or housing material (column 3, lines 60-61) and (2) May
teaches that impact-modified acrylic resins have a flexural modulus of at least 200,000 psi (column 4,
lines 44-47). While the examiner's conclusion may be reasonable, we also note that a showing of likely
or probable inherency is not sufficient to support a rejection under 35 U.S.C. § 102 or 103 under the
theory of inherency.
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
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