Appeal No. 1999-2790
Application No. 08/794,530
positively prevent reengagement thereof...," as in method
claim 10 and the claims which depend therefrom.
Like appellant, it is our opinion that the examiner's
position lacks any reasonable support in the applied Wall
reference and is based on speculation and conjecture on the
examiner's part. While it is possible that the scenario set
forth by the examiner on pages 4 and 5 of the answer may occur
during removal of Wall's stent from its position in a lumen of
the body, we note that it is well settled that inherency may
not be established by probabilities or possibilities, but must
instead be "the natural result flowing from the operation as
taught." See In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323,
326 (CCPA 1981). In the present case, the disclosure of Wall
does not provide an adequate factual basis to establish that
the natural result flowing from following the teachings of
that reference would be a stent including shaped profile means
like that disclosed and claimed by appellant which inevitably
functions in the recited manner.
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