Appeal No. 2006-0791 Ex parte Gore Enterp. Holdings, Inc.
inherent property of the suggested combination for claims 1 and 35. For claim 29, Gore further
argues that Ito's membrane cannot be processed at 140°C. We determine that the substitution of
PTFE for Ito's polyolefin addresses this limitation.
Inherency
A property stated in a claim may be inherently present in the combination the examiner
suggests. It is not, however, enough that the putative inherent property is possibly present: it
must necessarily be present in the combination and susceptible to recognition by those in the art.
Extrinsic evidence must make clear that the missing descriptive matter is necessarily present in
the thing described in the reference and that it would be recognized by persons skilled in the art.
In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999). Since the
examiner does not have the resources to test the combination, the examiner may rely on
structural or compositional identity of the combination with the claimed invention to provide the
basis for the inherent property. In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed.
Cir. 1990); In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138-39 (Fed. Cir. 1986). Inherency
arguments are particularly difficult to make successfully for a property that may be altered by a
substitution or modification suggested in the art.
Gore urges that Spada requires identical processing of identical starting materials to
support a finding of inherency. We do not read the case quite that narrowly. The examiner is
basically right that Spada stands for the proposition that identical materials may be presumed to
have identical properties. In Spada, the fact of similar processing of the same starting material
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