Appeal No. 1999-1533 Page 11
Application No. 08/666,948
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.
Here, the examiner's determination that the systems of
Lachaussee and Mizuta "are designed to prevent article
rotation" is simply speculative. It is our opinion that the
examiner has not provided any evidence or scientific reasoning
to establish the reasonableness of his belief that the above-
noted limitation of claim 1 is an inherent characteristic of
Lachaussee or Mizuta. In that regard, with respect to
Lachaussee, we find that it more likely than not that cases 2
will rotate about their axis when pushed along the guide bar 5
and edge 6 by teeth 41 of the rake 3. With respect to Mizuta,
we find that the amount of play inherent in Mizuta's apparatus
is such that the above-noted limitation of claim 1 is not
readable on Mizuta's apparatus.
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007