Appeal No. 2006-0130
Application 10/161,166
bare contention that a “weakening” may occur is not sufficient to establish inherency. Indeed, it
is well settled that in order to establish that a claim element is inherent in a prior art reference, it
must be established that such limitation is necessarily present in the description in the reference
and that it would be recognized as such by one of ordinary skill in the art, as “[t]he mere fact that
a certain thing may result from a given set of circumstances is not sufficient. [Citations
omitted.]” In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981); see also
Transclean Corp. v. Bridgewood Serv., Inc., 290 F.3d 1364, 1372-73, 62 USPQ2d 1865, 1870-71
(Fed. Cir. 2002); MEHL/Biophile Int’l Corp. v. Milgram, 192 F.3d 1362, 1365, 52 USPQ2d
1303, 1305-06 (Fed. Cir. 1999); In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51
(Fed. Cir. 1999); In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995);
Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268-69, 20 USPQ2d 1746, 1749-50
(Fed. Cir. 1991); In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986);
cf. Ex parte Levy, 17 USPQ2d 1461, 1462-64 (Bd. Pat. App. & Int. 1990), and cases cited
therein; Ex parte Skinner, 2 USPQ2d 1788, 1788-89 (Bd. Pat. App. & Int. 1986).
We agree with appellants that it is not apparent that the machine of Clancy operated by
the process that one of ordinary skill in the art would have found therein would necessarily
inherently cause a weakening in the longitudinal fold lines between the panels of the individually
produced and enveloped towelettes. Indeed, there is no disclosure in Clancy that the individual,
separated towelettes are to be used in any other fashion than as a whole. Thus, there is also no
suggestion or motivation to one of ordinary skill in the art in Clancy to modify the teachings
thereof in these respects, either expressly or by inference. See B.F. Goodrich Co. v. Aircraft
Braking Sys. Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996) (“When
obviousness is based on a particular prior art reference, there must be a showing of a suggestion
or motivation to modify the teachings of that reference. [Citation omitted.] This suggestion or
motivation need not be expressly stated. [Citation omitted.]”).
On this record, we further agree with appellants that this particular difference between
the
1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
- 4 -
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007