Appeal No. 2004-0299
Application No. 09/932,543
appealed claim 1. The appellant’s opposing viewpoint is
expressed on page 3 of the reply brief in the following manner:
It is not “inherent” that the set screw of Trembly
[sic, Tremblay] engages the bottom of the groove. If
Trembly’s [sic, Tremblay’s] set screw did so engage, it
would interfere with the operation of the detents.
Fixed point securement along the length of Trembly’s
[sic, Tremblay’s] groove is performed by the detent,
not the set screw. The screw engages the edge [i.e.,
shoulder 32a] of the groove, not the bottom.
We appreciate that the mode of operation disclosed by
Tremblay for his Figure 1 tool embodiment does not include
engagement of screw 30 with the bottom of groove 32. However,
this fact does not forestall a determination that patentee’s tool
structure would be inherently capable of such engagement. See In
re Yanush, 477 F.2d 958, 959, 177 USPQ 705, 706 (CCPA 1973) and
In re Glass, 474 F.2d 1015, 1019, 176 USPQ 529, 532 (CCPA 1973).
The pivotal issue is whether the Tremblay structure inherently
possesses the capability of performing the previously quoted
function claimed by the appellant (id.) based upon a
determination which is reasonably supported by fact and/or
technical reasoning (see Ex parte Levy, 17 USPQ2d 1461, 1463-64
(Bd. Pat. App. & Int.) and Ex parte Skinner, 2 USPQ2d 1788, 1789
(Bd. Pat. App. & Int. 1986)). We share the examiner’s view that
the answer to this issue is in the affirmative.
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