Appeal No. 1999-0864 Page 7
Application No. 08/757,550
environmental image according to the sound volume or sound of
the display device detected by said circumstance detector.”
In addition, claims 22-25, 29-31, and 35 specify in pertinent
part the following limitations: “detecting conditions under
which a user uses the image display device, said conditions
being external to the environmental image; and varying the
environmental image according to conditions detected by said
circumstance detection.” Accordingly, claims 1, 3, 4, 15-17,
19-25, 28-31, and 35 require at least varying an environmental
image of an image display device according to detected
conditions external to the image.
The examiner fails to show a teaching or suggestion of
the limitations in the prior art. “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.’" In re Robertson, 169 F.3d
743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) (quoting
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20
U.S.P.Q.2d 1746, 1749 (Fed. Cir. 1991)). "Inherency, however,
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