Appeal No. 1997-2646
Application 08/103,089
"Inherency, however, may not be established by probabilities
or possibilities. The mere fact that a certain thing may
result for a given set of circumstances is not sufficient."
Id. citing Continental Can, 948 F.3d at 1269, 20 USPQ2d at
1749.
Bille’s silence as to the surgical removal of tissue in
no way makes clear that resolve of tissue acted upon by a
laser is necessarily a part of Bille's invention. The
Examiner provides no basis for the assumption that surgery and
resolve are the only two methods for removal of tissue acted
upon by a laser which would have been available to one of
ordinary skill in the art. Thus, even if the assumption is
made that surgery could not have formed a part of Bille’s
invention, there are other methods of removal other than by
resolve. Therefore, we find that Bille does not anticipate
the invention as recited in claim 17.
We turn next to the rejection of claims 1-8, 18 and 20-24
under 35 U.S.C. § 103 over Bille and of claims 9-16, 19, 25,
and 26 over Bille in view of L’Esperance.
The Federal Circuit states that “[t]he mere fact that the
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