Appeal No. 2000-0210 Page 12
Application No. 08/893,906
The appellants argue (brief, pp. 5-6) that Paykin does
not teach or suggest the incorporation of an anti-adhesive
additive to the plastic material of the backing ring to
prevent the backing ring from attaching to the polymeric
material that the sealing ring is made of.
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
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