Appeal No. 2005-0487
Application No. 09/961,821
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.
Viewed in light of these principles, the fair teachings of
Ludwig do not justify a finding or conclusion that the O-rings
disclosed in the reference would deform in the manner specified
in claims 1 and 6 under any realistic operating conditions, let
alone when the piston rod exceeds a predetermined speed relative
to the cylinder. The examiner’s determination to the contrary
rests on baseless conjecture as to the physical characteristics
of these O-rings and essentially reads the “predetermined speed”
limitation out of the claims. Indeed, Ludwig’s own description
6
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