Appeal No. 2001-2193 Page 7
Application No. 09/152,515
is sized so that a pressurized liquid fuel injected therefrom
will atomize. Forney does not teach that any of his ports 57
and 58 are sized so that a pressurized liquid fuel injected
therefrom will atomize. Additionally, 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
settled that the disclosure should be regarded as
sufficient.
In this case, it is not clear that the missing descriptive
matter (i.e., that ports 57 and 58 are sized so that a
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