Appeal No. 1997-0706
Application No. 08/040,528
with the reading of a predetermined memory location of an
installed chip. Although the Examiner, in the attachment to
the Advisory action of October 14, 1999, suggests the
inherency of the assignment of particular socket pin numbers
to predetermined locations of the installed chip memory, the
record is totally devoid of any support for such an assertion.
To establish inherency, evidence must make clear that the
missing descriptive matter is necessarily present in the thing
described in the reference and would be recognized as such by
persons of ordinary skill. In re Robertson, 169 F.3d 743,
745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) citing
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.” Id. citing Continental, 948
F.2d at 1269, 20 USPQ2d at 1749.
In view of the above discussion, since all of the claimed
limitations are not disclosed by Chuang or inherent therein,
the Examiner’s 35 U.S.C. § 102(e) rejection of independent
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