Appeal No. 1999-1533 Page 10
Application No. 08/666,948
of inherency, "a mechanism for moving said members in said
direction with said assembled part being configured to be
conveyed without rotation and guided through the movement of
said delivery member and said positioning member as one body
along said direction" as recited in claim 1. We agree.
The examiner's position (final rejection, p. 2) with
respect to the above-noted limitation of claim 1 is that since
both Lachaussee and Mizuta do not specifically disclose
rotation of their articles relative to the article guides, the
systems of Lachaussee and Mizuta "are designed to prevent
article rotation."
It is well-settled that 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
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