Appeal 2006-3319
Application 10/366,585
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 function, it seems to
be well settled that the disclosure should be
regarded as sufficient.
Even accepting the Examiner's assertion that echocardiography can
provide blood vessel information and would inform the doctor or surgeon of
perfusion in the vessel, which is not disputed by Appellants, the Examiner
has not pointed to any teaching by Cohn that the doctor or surgeon would
use the echocardiography, or the information provided thereby, to assess
arterial perfusion of the heart or cogently explained why the doctor or
surgeon would necessarily do so. While the Examiner has articulated
reasoning as to why it might be prudent or even critical for the doctor or
surgeon to assess arterial perfusion of the heart during the Cohn procedure,
such reasoning is not sufficient to support a rejection based on anticipation
under the theory of inherency. The rejection of independent claims 1 and
33, and claims 2, 3, 11, 12, 14, and 34-37 depending therefrom, as
anticipated by Cohn cannot be sustained.
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: September 9, 2013