Appeal No. 2000-0003 Page 9
Application No. 08/618,814
show a region of the peripheral wall which remains at the
original diameter while the peripheral wall above that region
is reduced in diameter is, in our view, pure speculation. 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
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 this case, it is our opinion that the examiner's position
is based upon shear speculation. Furthermore, it is our view
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007