Appeal No. 1999-2186
Application No. 08/857,571
property of the claimed material is not enough; rather, it is
well settled that for a reference to be effective via
inherency, the claim limitation in question must be
"inevitably present" in the reference, and must be "the
natural result flowing from the operation as taught." In re
Oelrich, 666 F.2d 578, 581, 212, USPQ 323, 326 (CCPA 1981).
In the present case, the Schuler declaration establishes that
rubber, as generically disclosed by Lundy or Ranseen, might or
might not be effective as an eraser, depending on its
particular composition, so that in those references an eraser
would not be "inevitably present," nor would the inclusion of
an eraser be the natural result flowing from the operation
(use of rubber) taught in those references. Since, as per the
Schuler declaration, not all rubbers are usable as erasers,
the rubber body of the Lundy tee, or the rubber collar of
Ranseen, are not effective to inherently meet or render
obvious the "eraser" limitation of claim 1, and the rejections
of that claim, as well as of the other claims included in
rejections (1) and (5), will not be sustained.
Rejections (2) to (4) and (6) to (8) also will not be
sustained, since the additional references applied therein do
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