Appeal No. 1999-1895
Application No. 08/363,315
to 2. In other words, the claimed phase shift must be B/4 or
B/8 or B/16, etc., but can never be B/2.
The Court held in In re Robertson, 169 F.3d 743, 745, 49
USPQ2d 1949, 1950-51 (Fed. Cir. 1999) that:
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 U.S.P.Q.2d
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. at 1269, 20 U.S.P.Q.2d at 1749
(quoting In re Oelrich, 666 F.2d 578, 581, 212
U.S.P.Q. 323, 326 (C.C.P.A. 1981).
Thus, to prove that the claimed phase shifting is, in fact,
inherent to De Gaudenzi's method and system, the examiner
needs to provide extrinsic evidence showing that the claimed
phase shifting is necessarily present. However, the examiner
provides no such evidence. Further, the examiner fails to
respond to appellants' argument that a phase shift of B/2,
rather than the claimed phase shift, is introduced by De
Gaudenzi. Consequently, we cannot accept the examiner's bald
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