Appeal No. 2001-1936
Application 09/049,478
If anything, the statement at page 7, lines 9 and 10 that
"[n]ormally, these component systems are incorporated in an
optical pick-up" would ordinarily be construed as referring to
the manner in which appellants have disclosed the component
systems of a reproduction block and a recording block as being in
an optical pick-up of the disclosed invention rather than any
inference or indication that these are normally found in the
prior art. The examiner's attempt to prove inherency in the
applied prior art by reference to the specification as filed is
problematic at best to begin with.
Appellants correctly rely upon In re Robertson, 169 F.3d
743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) at page 9 of
the principal brief on appeal. The earlier noted portions of
Ceshkovsky relied upon by the examiner as indicating inherency
does not so indicate to us that the disputed RF characteristic of
his invention is necessarily present or flowing from the
teachings of Ceshkovsky itself. Robertson indicates that certain
extrinsic evidence may be utilized to make clear any missing
descriptive material that may be necessarily present within
Ceshkovsky as long as this would be so recognized by the artisan.
It appears to us that this is the basis on which the examiner
relies upon Kuroda and the particular portion thereof at column
5
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