Appeal No. 2004-0058
Application No. 09/728,518
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). As the court 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)):
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.
In this case, the examiner has not provided a basis in fact and/or technical
reasoning to reasonably support the determination that the above-identified method
steps necessarily flows from the teachings of Field.
With respect to the step of starting the engine at an engine speed below a
resonance speed of a drivetrain of the vehicle (claim 8), the examiner's belief (answer,
p. 7) that the engine speed is zero when an engine is started and is therefore below the
resonance speed of the drivetrain is simply wrong. An engine whose speed is zero
clearly has not started. The claim language of "starting the engine at an engine speed"
refers to the engine speed (i.e., r.p.m.) that occurs immediately after the engine has
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