Appeal No. 2001-2410 Page 8
Application No. 08/914,700
These disclosures bear some resemblance to the instantly claimed
method, in that they concern immunological detection using a filter to immobilize
the analyte of interest. However, Hossom does not suggest with any specificity
the limitations of the method claimed by Appellants. Hossom does not teach, for
example, a method that involves mixing a test sample with a liquid-phase binding
substance and a liquid-phase labeled detector substance, nor does Hossom
suggest with any specificity a porous support meeting the limitations of instant
claim 1.
We do not agree with the examiner that the pore size limitation of the
instant claims is met inherently by Hossom. When the examiner relies on a
theory of inherency, the material alleged to be inherently disclosed must
necessarily be present. See In re Robertson, 169 F.3d 743, 49 USPQ2d 1949
(Fed. Cir. 1999). See also In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326
(CCPA 1981): “‘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.’” (quoting Hansgirg v.
Kemmer, 102 F.2d 212, 214, 40 USPQ 665, 667 (CCPA 1939) (emphasis and
bracketed material in original)).
The examiner has pointed to no evidence showing that operation of
Hossom’s device would necessarily involve using a porous support meeting the
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