Appeal No. 2000-1934 Page 5
Application No. 08/779,420
perform the functions as claimed such as being
sufficiently longitudinally flexible to be bendable
along its length including its distal end. Also, by
adding holes at the distal end increases the
flexibility and bendability of the catheter(see col.
6, lines 1-13). An attachment of a softer piece can
be adhered to the distal end of the catheter as well
known in the art to be defined as an outlet nozzle
or projecting part from the shaft.
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, the examiner concedes on page 7 of the
answer that "one of ordinary skill in the art would have
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