Appeal No. 1999-2040
Application No. 08/475,023 Page 4
OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejections advanced
by the examiner, and the evidence of anticipation and obviousness
relied upon by the examiner as support for the rejections. We
have, likewise, reviewed and taken into consideration, in
reaching our decision, appellants' arguments set forth in the
briefs along with the examiner's rationale in support of the
rejections and arguments in rebuttal set forth in the examiner's
answer. Upon consideration of the record before us, we affirm-
in-part.
We begin with the rejection of claims 1, 7, 9, and 18 under
35 U.S.C. § 102(e) as anticipated by Spaulding. To anticipate a
claim, a prior art reference must disclose every limitation of
the claimed invention, either explicitly or inherently. In re
Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir.
1997). As 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)) (internal citations omitted):
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. If, however, the
disclosure is sufficient to show that the natural
result flowing from the operation as taught would
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