Appeal No. 1999-2626
Application 08/756,060
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
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.
In the present case, the fact that the beam-like bands 30a and
30b disclosed by Doubek and Johnson have the resiliency to
return to their normally planar state after being bent does
not necessarily mean that they have the elastic length
increasing/decreasing properties at issue. Since neither
Doubek nor Johnson discloses any other structure having such
-6-
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007