Appeal No. 2006-0790
Reexamination Control No. 90/005,117
The appellant, on the other hand, asserted (FF34;
substitute appeal brief at 13):
[T]here is no teaching, suggestion, or motivation in
5 Damark of distributing the components of the treadmill
such that the treadmill has a center of gravity that
assists the user in tipping or rotating the treadmill
onto the wheels for transport. In fact, there is no
mention or discussion whatsoever in the Damark
10 reference regarding the placement of specific
components, weight distribution or center of gravity,
much less benefit (i.e., making it easier for the user
to rotate or tip the treadmill onto its wheels, which
is more significant in relation to heavier, motorized
15 treadmills) that is achieved and claimed by appellant.
We agree with the appellant on this issue. The contested
claim limitation calls for the treadmill to be “configured to
have a center of gravity positioned relative to said roller
20 means and said handle means to facilitate rotation of said
treadmill about said wheel means upon application of a
rotational force by the user to said handle means.” While the
examiner alleged that this limitation would be “inherent” in
Damark, it is well settled that inherency may not be established
25 by mere probabilities or possibilities and that it is
insufficient to merely show that a certain thing may result from
a given set of circumstances. In re Robertson, 169 F.3d 743,
745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999); accord
MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365, 52
31
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