Appeal No. 2000-0182 Page 6
Application No. 08/831,327
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.
Accordingly, it is our view that the combined teachings of the
applied prior art would not have rendered the subject matter of
claim 1 obvious at the time the invention was made to a person
having ordinary skill in the art.
For the reasons set forth above, the decision of the
examiner to reject claim 1, and claims 3/1, 4/1, 10/1, 11/1, 12/1
and 22 dependent thereon, under 35 U.S.C. § 103 is reversed.
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