Appeal No. 1999-0482
Application 08/632,331
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 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.3d 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 for a given set of circumstances is
not sufficient.” Id. citing Continental Can Co v. Monsanto
Co., 948 F.3d 1264, 1269, 20 USPQ2d 1746, 1749 (Fed. Cir.
1991).
Upon our review of the Hower reference, we note that
Hower teaches in column 5, lines 2 through 10, that a server
processor is capable of combining a set of electronic
documents and a corresponding combination of print job
selections, such as a job ticket, into a job file for
6
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007