Appeal No. 1997-1924
Application No. 08/244,633
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. at
1269, 20 USPQ2d at 1749 (quoting In re Oelrich, 666 F.2d 578,
581, 212 USPQ 323, 326 (CCPA 1981)). Furthermore, “[t]o
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 a person of ordinary skill.’” In re Robertson,
Slip Op 98-1270 (Fed. Cir. February 25, 1999) citing
Continental Can Co. v. Monsanto Co., 948 F.3d 1264, 1268, 20
USPQ2d 1746, 1749 (Fed. Cir. 1991).
The Examiner has presented no extrinsic evidence of
inherency, or how Kawamura implicitly comprises knowledge
about where each tool is positioned, specifically the other
tools not in use. We have reviewed Kawamura to determine the
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