Appeal No. 2002-2198 Page 6
Application No. 09/408,409
Kwong teaches (column 6, lines 56-60) that "[m]oreover, the surface treatments
may be located anywhere on the acetabular and femoral components as long as the
fibrous capsule of tissue formed therebetween extends within the preparation boundary
between the implants and adjacent bone thereby forming a sealed enclosure."
The appellant argues (brief, pp. 3-8) that all the claims under appeal recite that
the prosthetic component include a non-bone-interfacing rough surface on the
peripheral side faces of the platform and that such is not taught by Kwong. We agree.
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 result in the performance of the
questioned function, it seems to be well settled that the disclosure should be
regarded as sufficient.
Thus, a prior art reference may anticipate when the claim limitation or limitations not
expressly found in that reference are nonetheless inherent in it. See In re Oelrich, 666
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