Appeal 2006-2793
Application 10/829,536
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). “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.” 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).
ANALYSIS
The Examiner’s theory in rejecting Appellant’s claims is that
Rinsma’s pressure pad 36, 53 would compress until the nut 39 reaches the
end of travel and abuts against the end of the grooves 39’, at which point no
additional compression of the pad can occur and, therefore, all additional
force would bypass the transducer and the force applied to the transducer is
limited (Answer 4). The problem with this theory, as pointed out by
Appellant (Br. 8, 9, 10, 12, 13), is that Rinsma does not expressly disclose
that pressure pad 36, 53 will compress to such an extent that nut 39 will
actually abut against the end of grooves 39’ and the Examiner has not
pointed to any teaching in Rinsma to explain why this would necessarily be
the case so as to establish a case of inherency.
To the extent that the Examiner is arguing that some of the force will
be transmitted through the outer sections of the walls of Rinsma’s pressure
pad and through the nut 39 to the piston 35 or to the arm 2 (Answer 4, 5),
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Last modified: September 9, 2013