Appeal No. 2002-0962
Application No. 09/017,959
reasonable.3 The burden then shifted to appellant to shown that
the Stevens structure did not inherently possess the limitations in
question, In re Schreiber, 128 F.3d at 1477, 144 USPQ2d at 1432,
but no evidence to that effect has been presented.
Appellant argues in the reply brief (pages 1-2) that the
limitation of configuring the projections such that they define a
curvature like that of a bowling ball when force is exerted by a
bowler on the ball is not inherent, citing In re Weiss, 26 USPQ2d
1885 (Fed. Cir. 1993) for the proposition that the mere fact that a
certain thing may result from a given set of circumstances is not
sufficient to establish inherency. In re Weiss is an unpublished
opinion and therefore is not citable as precedent. In any event,
the proposition for which Weiss is cited does not mandate a
contrary conclusion, but rather is consonant with the principles of
inherency developed by case law. See, for example, In re
3The examiner also found (answer, page 5) that “Fig. 2 of
Stevens clearly shows projections with ‘a curvature substantially
like a curvature of the bowling ball’ (cl. 17, ln. 6),” a finding
with which we do not agree. This circumstance is of no moment,
however, in that a finding that the projections of Stevens have a
curvature substantially like the curvature of a bowling ball
independent of their being pressed by the bowler against the ball
is not required in order to sustain the standing rejection of the
appealed claims.
7
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