Appeal No. 2002-1924 Page 4
Application No. 09/102,342
denied, 484 U.S. 827 (1987). The inquiry as to whether a reference anticipates a claim
must focus on what subject matter is encompassed by the claim and what subject
matter is described by the reference. As set forth by the court in Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984), it is only necessary for the claims to "'read on' something
disclosed in the reference, i.e., all limitations of the claim are found in the reference, or
'fully met' by it."
It is well-settled that 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. See Robertson, 169 F.3d at 745, 49
USPQ2d at 1950-51(citing 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 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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