Appeal No. 1999-0941 Page 5
Application No. 08/756,424
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 Steere is silent as to critical dimensions, such as wall, rib and bottom plate thicknesses,
which contribute to the apparent modulus of the marker as a whole, it is our opinion that the evidence
relied upon by the examiner is insufficient to establish that the pavement marker of Steere necessarily
possesses an apparent modulus of at least about 80,000 psi.
In the alternative, however, the examiner asserts that, even if the Steere marker does not
inherently have an apparent modulus of greater than about 80,000 psi, it would nonetheless have been
obvious to construct the Steere marker so as to provide such an apparent modulus in view of the
combined teachings of Steere and the AAPA. Specifically, as pointed out by the examiner, Steere
discloses that hollow shell markers which are potted with a rigid epoxy-type material produce marker
structures which are relatively rigid and over the years have proven to be remarkably durable in use
(column 1, lines 60-68) and further that
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007