Appeal 2007-0787
Application 10/689,230
1 shank 20 is made of metal nor is it apparent that the Tokarz’s shank would
2 inherently be of metal. While it is possible or even probable that one having
3 ordinary skill in the art would understand the shank to be made of metal, that
4 fact is insufficient to establish inherency. The missing disclosure must
5 necessarily flow from the references teachings. Robertson, 169 F.3d at 745,
6 49 USPQ2d at 1951. Probabilities and possibilities are insufficient to
7 establish inherency. Continental Can, 948 F.2d 1264 at 1269, 20 USPQ2d
8 at 1749. Tokarz does not expressly or inherently describe a shank made of
9 metal. Absent a basis for comparison, Tokarz can not describe a handle
10 made of a material more fragile than the material of the shank.
11 While we view as correct the Examiner’s finding that one skilled in
12 the relevant art would recognize that the shank portion of Tokarz handle
13 would likely be a metal such as chrome plated brass, that finding does not
14 establish anticipation. Inferences that the person of ordinary in the art might
15 draw from the express teachings of a reference while relevant to obviousness
16 under § 103(a), do not establish anticipation. The Federal Circuit
17 specifically addressed this issue :
18 The [district court] opinion says anticipation may be
19 shown by less than “complete anticipation” if one of
20 ordinary skill may in reliance on the prior art “complete
21 the work required for the invention”, and that “it is
22 sufficient for an anticipation ‘if the general aspects are
23 the same and the differences in minor matters is only
24 such as would suggest itself to one of ordinary skill in the
25 art.’ “Those statements relate to obviousness, not
26 anticipation. Anticipation requires the presence in a
27 single prior art disclosure of all elements of a claimed
28 invention arranged as in the claim. A prior art disclosure
29 that “almost” meets that standard may render the claim
30 invalid under §103; it does not “anticipate.”
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Last modified: September 9, 2013