Appeal No. 95-1402
Application No. 07/936,507
The Federal Circuit recently discussed inherency and whether an aspect of a claimed
invention would be necessary from the disclosure in In re Robertson, 169 F.3d 743, 745,
49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999). The Federal Circuit stated 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 persons of ordinary skill.’ " The Federal Circuit further stated that
"[i]herency, 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. From the factual evidence as stated by the examiner in
the answer, it would not be “necessary” yet it may have been obvious that some or all of the
functions would be carried out. The examiner has not made this argument or provided any
line of reasoning why it would have been obvious to one of ordinary skill in the art at the
time of the invention to have the gateway entry station and global database manager
perform all of the recited functions.
The examiner continues with this line of argument stating ”[a]s for the means for
reformatting the collected [and] the operational data into a single format, this is inherently
included in Lavigne when he shows the collection of many process data and
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