Appeal No. 2001-0378 Page 14
Application No. 08/873,876
necessary to test a material to determine its resiliency index
appears to be small since all that would be necessary is to test the
material as set forth in the appellant's discussion of Figure 3.
For the reasons set forth above, the decision of the
examiner to reject claims 1 to 18 under 35 U.S.C. § 112, first
paragraph, is reversed.
The anticipation rejection
We will not sustain the rejection of claims 1 to 3, 7 to
11 and 15 to 18 under 35 U.S.C. § 102(b).
To anticipate a claim, a prior art reference must
disclose every limitation of the claimed invention, either
explicitly or inherently. In re Schreiber, 128 F.3d 1473,
1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). As 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)) (internal citations omitted):
Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a
certain thing may result from a given set of
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