Appeal No. 1999-2458 Page 5
Application No. 08/851,693
The appellant argues (brief, pp. 4-5) that Huang fails to
teach, either expressly or by the doctrine of inherency, "the
substantially no gap clause." We agree.
The examiner's position (answer, p. 3) with respect to
"the substantially no gap clause" is that Figure 3 of Huang
"does in fact illustrate substantially no gap between the
corner post 605 and endfitting 20." We do not agree.
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
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
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