Appeal No. 2005-1843 Page 8
Application No. 09/585,222
machining a throughbore in said barstock symmetrically about the offset
throughbore axis to produce an eccentrically located throughbore defining a
thicker portion and a thinner portion of said barstock outer wall;
machining a valve stem bore perpendicular to said throughbore in the
thicker portion of the barstock outer wall Iocated a maximum distance from said
offset throughbore axis;
selecting a standard size valve stem to be inserted in the valve stem bore
in the thicker portion of the barstock outer wall resulting in the thinner portion of
the barstock wall positioned opposite the valve stem; and
installing the standard size valve stem in said valve stem bore.
The sole basis for this rejection as set forth in the final rejection (p. 3) is that
"[t]he method of making is either inherent or obvious in view of Matousek's machined
valve."
The method of claim 6 is not inherent from Matousek's ball valve. In that regard,
it is not inherent1 that Matousek's operating stem 26 be a standard size valve stem. As
1It 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
(continued...)
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