Appeal 2006-2911
Application 10/005,551
B. Claims 4, 7, 11, 15 and 16
Addressing the remaining rejections, Appellants argue that the Examiner
fails to “assert or identify any correspondence between any of the dependent
claims and [Daniels],” specifically arguing that none of claims 4, 7, 11, 15 and 16
receive proper rejection.3
With respect to claim 4, Appellants assert that Daniels lacks the limitation
“wherein N is 24 and M is 16.” (Br. 8). The Examiner argues that Daniels
inherently includes this limitation “because Daniel speaks in terms of bytes, i.e. 8
bits, and his example is N being 16 and M being 8.” (Answer 5).
Under the principles of inherency, if a structure in the prior art necessarily
functions in accordance with the limitations of a process or method claim of an
application, the claim is anticipated. In re King, 801 F.2d 1324, 1326, 231 USPQ
136, 138 (Fed. Cir. 1986) (citing In re Hack, 245 F.2d 246, 248, 114 USPQ 161,
163 (CCPA 1957)). Furthermore, “[t]o establish inherency, the extrinsic evidence
‘must make clear that the missing descriptive matter is necessarily present in the
3 As permitted by 37 C.F.R. § 41.39, the Examiner responded with five new
grounds of rejection, which are addressed below. Rather than opting to reopen
prosecution after the Examiner’s Answer, according to 37 C.F.R. § 41.39(2)(b)(1),
Appellants maintained appeal, as permitted under 37 C.F.R. § 41.39(2)(b)(2),
asserting as rebuttal that the Examiner’s conclusions lack support in the record.
Any questions or arguments related to the propriety of maintaining these rejections
at this stage of prosecution are petitionable matters and will not be addressed by
this panel.
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