Appeal 2007-0787
Application 10/689,230
1 Orthopaedics Inc., 976 F.2d 1559, 1565, 24 USPQ2d 1321, 1326 (Fed. Cir.
2 1992). Inherency requires that the missing descriptive matter necessarily be
3 present in the thing described in the reference. In re Robertson, 169 F.3d
4 743, 745, 49 USPQ2d 1949, 1951 (Fed. Cir. 1999). Inherency may not be
5 established by probabilities or possibilities. The mere fact that a certain thing
6 may result from a given set of circumstances is not sufficient. Continental
7 Can Co. v. Monsanto Co., 948 F.2d 1264, 1269, 20 USPQ2d 1746, 1749
8 (Fed.Cir. 1991).
9 ANALYSIS
10 Applicant’s Claim 1 requires that the handle portion of the lever
11 assembly be made “a material that is more fragile than a material forming
12 said shank.13” Tokarz teaches that the handle portion of the lever assembly
13 may be made of “metal such as chrome or brass, wood, porcelain or
14 plastic.14” Tokarz does not describe the material of the shank portion 20.
15 Thus, Tokarz does not provide a basis for comparing the materials of the
16 handle and shank to determine if Tokarz discloses a handle material that is
17 more fragile than the material forming the shank.
18 The Examiner addresses the “more fragile” limitation by finding that
19 Tokarz teaches a handle portion made of a material including plastic or
20 ceramic and that “one of ordinary skill in the art recognizes that shank
21 portion is likely to be chrome-plated brass for example.15”
22 In order to anticipate, each claim limitation must be expressly or
23 inherently found in the reference. Minnesota Mining, 976 F.2d at 1565, 24
24 USPQ2d at 1326. The Tokarz patent neither expressly describes that the
13 Appeal Br. Claim 1.
14 Tokarz 1:56-59.
15 Answer 3.
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