Appeal No. 2001-0342 Page 12
Application No. 08/677,707
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.
Tash teaches (column 5) that his sealing rim 45 provides a
seal during compression of the bellows. Tash does not teach
that his sealing rim 45 is capable of allowing air to escape
from the interior of the bellows during compression of the
bellows. Thus, the examiner's position that Tash's sealing
rim 45 is capable of allowing air to escape when sufficient
pressure is created in the bellows to overcome the sealing
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