Appeal No. 2001-1235 Paper 14
Application No. 08/951,943 Page 4
inherent to the disclosure of Campbell” (answer, p. 3). The examiner maintains that the
method disclosed by Campbell and appellants’ claimed method “appear to be
equivalent” (answer, p. 4).
The examiner is not convinced of any patentable differences because
Campbell’s specification include the limitations claimed by appellants, as
is noted above [i.e., the articles are heated to a temperature above the
melting point of the crystalline hydrate]. It is inherent that the heating of
each individual laminate can be performed immediately following
lamination. Although, the reference prefers to heat the laminations after
being placed in their packages. Therefore, the claimed limitations are
seen to be inherent over the Campbell reference. [Answer, p. 5,
emphasis in the original.]
First, anticipation requires that all elements of the claimed invention be
described, either expressly or under the principles of inherency, in a single prior art
reference. In re Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir.
1994); In re Spada, 911 F.2d 705, 708 15 USPQ2d 1655, 1657 (Fed. Cir. 1990).
Second, it is well established that inherency cannot be established by probabilities or
possibilities. In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981) citing
Hansgirg v. Kemmer, 102 F.2d 212, 214, 40 USPQ 665, 667 (CCPA 1939).
Here, as pointed out by appellants, “Campbell does not disclose annealing each
individual film or laminate nor performing the annealing immediately following formation
and/or lamination” (brief, p. 7). Moreover, to the extent that Campbell suggests
“crystallization seemed to appear after the step in which the multilaminate film is cut
into individual devices” (c. 2, ll. 36-38), the examiner has not explained why one of
ordinary skill in the art would have been motivated to employ one or more heating steps
prior to cutting laminated films into individual devices as required by all the independent
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