Appeal No. 2003-0331 Page 5
Application No. 09/106,608
Additionally, we do not agree with the examiner (see answer, page 4) that
Howell’s broad teaching of an “inclined” wellbore is sufficient to teach under principles
of inherency the particular angle range of 40 to 90 degrees called for in independent
claims 1, 7, 15 and 21 (or 40 to 60 degrees as in claims 5, 12, 19 and 26). Under
principles of inherency, when a reference is silent about an asserted inherent
characteristic, it must be clear that the missing descriptive matter is necessarily present
in the thing described in the reference, and that it would be so recognized by persons of
ordinary skill. Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d
1746, 1749 (Fed. Cir. 1991). We see nothing in the use of the term “inclined” or the
other teachings of Howell which would have led persons skilled in the art to recognize
that an inclination angle of 40 to 90 degrees is necessary.
For the foregoing reasons, we conclude that the teachings of Howell and Shaw
are insufficient to establish a prima facie case of obviousness of the subject matter of
claims 1-30.
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007