Appeal No. 2001-1418
Application 08/022,822
In addition, the examiner’s determination that the Gammons
pad is structured such that it would inherently meet the
recitations in claim 39 of “an undulating wall which is oriented
and dimensioned to decrease in dimension to the same degree that
the width of the channels decreases upon pressurization of the
structure,” and in claim 51 of “an undulating line [forming] a
chamber which communicates with the channel and also inflates and
decreases in lateral dimension upon pressurization, the
undulating line being oriented and dimensioned to make the
decreases in lateral dimension substantially equal in the channel
and in the chamber” is unduly speculative given the lack of any
relevant teaching in the reference on this matter.
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
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