Appeal Number: 2006-3321
Application Number: 09/843,381
• whether Seo’s vending machine optionally reconstitutes components with
one or more other components
(See Br. 7-8, Answer 10-15 and Reply Br. 2-9).
The examiner contends that Seo’s use of the plural form of “button” and the
use of hot and cold water evidence the selection by a customer of one or more
components. The plural form of “button” occurs in the paragraph
The product selecting unit 410 disposed with a plurality of buttons
corresponding to respective products in the automatic vending
machine serves to input a product selection signal to the controller
420 when the buttons are manipulated.
(Col. 3, lines 58-61)
A single product selection signal, not plural component selection signals,
emanates from this sequence. Further, this portion gives no indication that
different buttons represent different components. Similarly, there is no suggestion
in Seo that a customer has a choice of hot or cold water for any given selection.
The fact that a certain result or characteristic may occur or be present in the
prior art is not sufficient to establish the inherency of that result or characteristic.
In re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993)
(reversed rejection because inherency was based on what would result due to
optimization of conditions, not what was necessarily present in the prior art); In re
Oelrich, 666 F.2d 578, 581-82, 212 USPQ 323, 326 (CCPA 1981). "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. Inherency, however, may not
be established by probabilities or possibilities. The mere fact that a certain thing
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