Appeal No. 96-1795
Application No. 08/262,745
have large amounts of SAN in lower ranges, thus certainly
meeting the minimum amounts required by the claims on appeal
(Id.). In other words, the examiner is urging that it is
inherent that each higher molecular weight SAN fraction will
contain small amounts of lower molecular weight SAN sufficient
to meet the limitations of the appealed claims.
As stated in In re Robertson : 2
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.’ [Citation omitted].
‘Inherency, 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.’ [Citations
omitted].
The examiner’s citation of Hiemenz (Answer, page 7) is
not sufficient evidence that the SAN copolymer of Eichenauer
I, II or Cincera will necessarily contain both the claimed
amounts and average molecular weights of lower M SAN
w
fractions. Hiemenz merely shows that different fractions of a
polymer are made of different molecular weights to ultimately
2169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir.
1999).
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