Appeal No. 1998-0616
Application No. 08/614,347
(brief, p. 14) that the language “raised on the shaft member
by displacement of shaft material” defines certain structure
of the raised burr, i.e., that the raised burr is formed of
shaft material, which may not be ignored.
In addition, the examiner’s position that Matt’s
projections 5 will produce burrs or rough edges at the grooves
9 is unduly speculative. Matt gives no express indication
that grooves 9 have rough edges sufficient for retaining the
cam in the axial direction on the cam 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
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007