Appeal No. 2004-2059
Application No. 10/278,725
cert. denied, 465 U.S. 1026 (1984). Concerning inherency, it is
well settled that if a prior art device inherently possesses the
capability of functioning in the manner claimed, anticipation
exists regardless of whether there was a recognition that it
could be used to perform the claimed function. See, e.g., In re
Schrieber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431-32 (Fed.
Cir. 1997).
As framed by appellant, the issue with respect to the
standing anticipation rejection of claim 1 is whether the floor
panel of Boyd’s Figures 6-9 embodiment includes portions that are
connected to each adjacent portion by “a membrane adapted to be
severable” so that “each portion [is] removable from said tile
upon severing of the membranes connecting it to the other
portions.” Appellant argues (brief, page 5) that it does not
necessarily follow that the panel system of Boyd, even when made
of rigid plastic and composed of cross-sections (3) of thinner
material to provide panel flexibility, would be adapted to be
severable. Appellant further argues (brief, page 6) that the
examiner speculatively concludes that elements (3) of Boyd are
inherently adapted to be severable, and that this speculative
conclusion is inconsistent with the law of inherency.
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