Appeal 2007-2137
Application 10/472,911
“natural result flowing from” the explicit disclosure of the prior art.
Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1379 (Fed. Cir.
2003). “Inherency . . . 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.” MEHL/Biophile Int’l Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999) (quoting In re Oelrich,
666 F.2d 578, 581 (CCPA 1981)). King provides evidence that it was
possible to obtain a density within the claimed range, but such a density is
not always obtained under every circumstance (FF 4). Therefore, a density
within the claimed range is not the natural result of following the teachings
of Leese, it is merely a possibility.
We find that Leese, as evidenced by King, fails to describe an article
having each and every structural element of the claims including a base layer
of density less than or equal to about 0.65 g/cm3 (Claims 1 and 18) or less
than or equal to about 0.7 g/cm3 (Claims 19 and 20).
B. BASIS FOR REMAND
The above being said, there is another issue to be considered: Does
Leese in combination with King provide evidence that it would have been
obvious to one of ordinary skill in the art to make a sheet having the claimed
structure and properties? Here, there is an express suggestion to use the
composition of King in the core layer of Leese. King provides examples in
which the composition is processed to result in sheets with density within
the claimed range (e.g., Exs. 1 and 2), and also details the effects of metal
resinate concentration and stretching parameters on the level of density
reduction upon stretching of the sheet (Examples). Moreover, King provides
evidence that a reduction of the density was desired by those in the art
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