Appeal No. 2004-0786
Application No. 08/935,116 Page 7
to be statutory under 35 U.S.C. § 101. Turning to independent
claim 34, we find claim 34 to be statutory for the same reasons
as claim 33. Accordingly, the rejection of claims 33-39 under 35
U.S.C. § 101 as being drawn to descriptive, non-functional
subject matter is reversed.
We turn next to the rejection of claims 8, 9, 12 and 13
under 35 U.S.C. § 102(b) as being anticipated by Creekmore. To
anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or
inherently. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1431 (Fed. Cir. 1997). As 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))
(internal citations omitted):
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.
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.
The examiner's position is set forth on pages 2 and 3 of the
answer.
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