Appeal No. 2000-0909
Application No. 08/784,752
points will necessarily result in the path lengths of the
carrier 5 being adjusted by “equal and opposite amounts” as
required by claims 1, 27 and 34 is speculative. Nyfeler gives
no express indication that the path lengths of the carrier 5
are adjusted by equal and opposite amounts before and after
passing through the transfer station. 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
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