Appeal No. 2001-2422
Application No. 08/817,573
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). In the present case, the examiner's apparent
theory of a direct correlation between the elasticity taught
in Jessup '158 and resistance to stretch is unfounded.
Moreover, the examiner has in no way established or even
reasonably attempted to establish that the disclosure of
Jessup '158 when viewed by one of ordinary skill in the art
would provide an adequate factual basis to establish that the
natural result flowing from following the teachings of that
reference would be a sanitary napkin or incontinence guard
including an elasticized waist border that has a greater
resistance to stretch in the first and second side parts
thereof than in the central parts, as required in appellants'
claims before us on appeal. Indeed, the examiner's own
position (final rejection, page 2) that the elasticity of the
center parts in Jessup '158 "can be anything" and, thus, that
it follows that the resistance to stretch "can be anything,"
belies a conclusion that Jessup '158 inherently teaches
appellants' specifically claimed subject matter.
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