Appeal No. 2005-0682 Page 10
Application No. 10/064,682
vehicle brake pressure would be supplied to McGrath's controller 250 by Becker's
pressure transducer assembly 13 which is distinct and separate from McGrath's
anti-lock braking system 252. As such claims 11 and 20 are not anticipated by
McGrath.
As to the examiner's opinion (answer, p. 6) that "the pressure transducer
provided downstream of the master cylinder constitutes part of the anti-lock brake
system" we note that there is no evidence in the rejection before us that supports this
opinion. The examiner may not, because of doubt that the invention is patentable,
resort to speculation and/or unfounded assumption to supply deficiencies in the factual
basis for the rejection. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178
(CCPA 1967), cert. denied, 389 U.S. 1057 (1968). 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. 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
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