Appeal No. 2004-2368
Application No. 09/395,854 Page 4
(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.
Appellants assert (brief, pages 5-8) that "the prior art
does not teach or suggest2 bypassing a first stage in a two stage
series before retesting a second stage." Appellant further
asserts (brief, page 5) that Lindberg does not teach or suggest
“retesting a two-stage circuit, which has a first stage and a
second stage, after bypassing the first stage if an original test
output from the second stage was defective.” It is argued (id.)
that because Lindberg tests for stuck at 0 or 1, such faults do
not permit a signal to be propagated through either defective
stage and that “Lindberg does not teach serially propagating a
signal through the first stage and then the second stage, as
claimed in the present invention ... [and] Lindberg does not
teach ‘upon the test detecting a defect in the integrated
circuit, retesting the integrated circuit while bypassing the
2 Appellants' use of the phrase "suggest" is misplaced as claim 15 has
not been rejected under 35 U.S.C. § 103.
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