Appeal No. 2002-0612
Application No. 09/254,631
tightened against housing part 20 by means of screws (column 2,
lines 44-46). As the examiner sees it,
when the head 53 is tightened against the casing 20,
the head 53 provides an axial force against the sealing
element, which, in turn provides an axial force at its
lower end face against casing 20. Thus, [the] sealing
element inherently provides a sealing function at its
end faces, when the head 53 is tightened against the
casing 20. [Answer, pages 7-8; emphasis added.]
Under the principles of inherency, when a reference is
silent about as 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, 1269, 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 to show that
the natural result flowing from the operation as taught
would result in the performance of the questioned
function, it seems to be well settled that the
disclosure should be regarded as sufficient.
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