Appeal No. 2004-0366 Page 9
Application No. 09/848,044
64a and 64b of the sign faces 50a and 50b, respectively as explained on pages 14-15
of the specification. The examiner's position that Mudd's sign 6 is inherently configured
as claimed is sheer speculation.2 As such, the examiner has not established the claim
21 is anticipated by Mudd.
Since all the limitations of claims 1, 18 and 21 are not disclosed in Mudd for the
reasons set forth above, the decision of the examiner to reject claims 1, 18 and 21, and
claims 2, 7, 15 to 17, 19, 20, 24 and 25 dependent thereon, under 35 U.S.C. § 102(b)
as being anticipated by Mudd is reversed.
The anticipation rejection based on Zachner
We will not sustain the rejection of claims 1, 2, 15, 18 to 21, 24 and 25 under
35 U.S.C. § 102(b) as being anticipated by Zachner.
2 It is well-settled that 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). 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.
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