Appeal No. 2002-1649 Page 5
Application No. 09/405,781
corresponding structure or be an “equivalent”, i.e. perform the identical function in substantially
the same way, with substantially the same result.
The Examiner does not find the heaters to have the same structure as the corresponding
structure nor has the Examiner advanced a reasonable basis to believe that the heaters of
Goswami and Yamanaka, as located in their devices, necessarily perform the identical function
as claimed. While the Examiner argues that the air around the heating means of the prior art
would have inherently risen (Answer 4), “[a]nticipation by inherent disclosure is appropriate only
when the reference discloses prior art that must necessarily include the unstated limitation.”
Transclean Corp. v. Bridgewood Services, Inc., 290 F.3d 1364, 1372-73, 62 USPQ2d 1865,
1870-71 (Fed. Cir. 2002). “Inherency ... 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.”
Mehl/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365, 52 USPQ2d 1303, 1305 (Fed. Cir.
1999)(quoting In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981)). See also
Glaxo, Inc. v. Novopharm Ltd., 830 F.Supp. 871, 874, 29 USPQ2d 1126, 1128 (E.D. N.C.
1993), aff’d, 34 USPQ2d 1565 (Fed. Cir.), cert. denied, 516 U.S. 988 (1995)(“[I]t is not
sufficient that a person following the disclosure sometimes obtain the result set forth in the
claim, it must invariably happen.”). Although it is possible that the heaters of Goswami and
Yamanaka may cause air to rise past the photocatalyst, neither heater is in a position where it is
clear that such air movement will necessarily occur.
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