Appeal No. 2003-0013
Application No. 09/569,539
of the examiner’s rejection of independent claim 1, as well as
claims 2-6 that depend therefrom.
Furthermore, we do not agree with the examiner’s position to
the effect that the barrel shaped springs of Boudreau would
necessarily have a first zone formed by coils providing a first
initial spring constant and a second zone formed by coils providing
a second initial spring constant that is substantially greater than
the first initial spring constant, as called for in the last
paragraph of claim 1, simply because of their barrel shape. In
that regard, it is well settled that inherency may not be
established by probabilities or possibilities, but must instead by
“the natural result flowing from the operation as taught.” See In
re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981). As
we see it, the examiner’s conclusion that Boudreau’s springs would
have the characteristics called for in the last paragraph of claim
1 “due to [their] barrel shape[]” (answer, page 3) is speculative.
Thus, even if we were to agree with the examiner that it would have
been obvious to provide barrel shaped spring in Ayrolles in view of
Boudreau, the subject matter of claim 1 would not result. This
constitutes an additional reason necessitating reversal of the
examiner’s rejection of the appealed claims.
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