Appeal No. 2001-2205
Application 09/228,987
examiner’s part that such a large, sheet-like drape would be
capable of being wrapped on a patient’s limb and of then being
affixed to the surgeon’s gown or apron in a plurality of
positions to facilitate the careful, precise manipulation of the
joint by the surgeon necessary during arthroscopic examination
and surgery, as required in appellant’s claim 1.
The examiner’s position (answer, page 6) that Sosebee
“inherently discloses every functional limitation in the claims”
on appeal is without foundation. In this regard, we note that it
is well settled that inherency may not be established by
probabilities or possibilities, but must instead be "the natural
result flowing from the operation as taught." See In re Oelrich,
666, F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981). As we pointed
out above, in the present case, neither the Sosebee patent nor
the examiner provides an adequate factual basis to establish that
the natural result flowing from following the teachings of that
patent would be an apparatus like that claimed by appellant and
which is capable of functioning in the manner claimed.
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