Appeal No. 1997-1924
Application No. 08/244,633
ignores the understanding of how any system really
operates. There are some details about any system
which are implicit by nature and may not be
absolutely specified in any part of the system’s
description....Kawamura et al. implicitly comprises
knowledge about where each tool is positioned or
there would be no way of detecting tool interference
in the system. (Answer-page 5.)
“Inherency and obviousness are distinct concepts.” W. L.
Gore & Associates, Inc. V. Garlock, Inc., 721 F.2d 1540, 1555,
220 USPQ 303, 314 (Fed. Cir. 1983) citing In re Spormann, 363
F.2d 444, 448, 150 USPQ 449, 452 (CCPA 1966). If the prior
art reference does not expressly set forth a particular
element of
the claim, that reference still may anticipate if that element
is "inherent" in its disclosure. To establish inherency, the
extrinsic evidence "must make clear that the missing
descriptive
matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of
ordinary skill." Continental Can Co. v. Monsanto Co. 948 F.2d
1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991). "Inherency,
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