Appeal No. 2003-1272 Page 15
Application No. 10/039,338
ground without doing damage to the turf surface being walked on and without
puncturing golf turf. We agree.
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.
In this case, the examiner's determination that "one skilled in this art would have
fairly expected the bristles (protrusions) of Jordan, Jr. to provide traction without doing
damage to the turf surface being walked on and without puncturing turf" is based on
9(...continued)
927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991).
Page: Previous 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 Next
Last modified: November 3, 2007