Appeal No. 2001-1605
Application 08/735,168
67. The Examiner points out that Bireley states that his
invention provides a global locking of resources and Bireley
describes for illustrative purposes that the page resource is a
lockable resource. The Examiner argues that a table partition is
an accessible database resource and thereby is deem lockable.
In response, Appellants argue that the Examiner has only
offered conclusionary statements about inherency and has not
brought forth extrinsic evidence to establish that those steps,
elements and limitations which he holds to be inherent are
necessarily present in Bireley. Appellants argue that the
Examiner as a result has not set forth a prima facie case of
anticipation.
Our reviewing court states that “[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 person of
ordinary skill.’” In re Robertson 169 F.3d 743, 745, 49 USPQ
1949, 1950-51 (Fed. Cir. 1999) citing Continental Can Co. v.
Mosanto 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
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