Appeal No. 2004-2072 Page 7
Application No. 10/036,678
argument. As to the examiner's alterative position, once again there is no certainty that
Brendel's bolt 11 is capable of manipulating Brendel's wedge portion 9 relative to his
brace member 12 when in the position shown in Figure 3 of Brendel. Accordingly, the
examiner's position is based on speculation. 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.
In this case, since Brendel does not necessarily function in accordance with the claimed
limitations, it does not anticipate. See In re King, 801 F.2d 1324, 1326, 231 USPQ 136,
138 (Fed. Cir. 1986).
Since Brendel does not disclose openings capable of being situated such that a
tool can be received into the openings and utilized to manipulate the wedge portion
relative to the brace member as recited in claim 26, Brendel does not anticipate claim
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