Appeal No. 96-2953
Application 08/258,565
anticipate if that element is "inherent" in its disclosure.
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."
Continental Can Co. v. Monsanto Co. 948 F.2d 1264, 1268, 20
USPQ2d 1746, 1749 (Fed. Cir. 1991). "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." Id. at 1269, 20 USPQ2d at
1749 (quoting In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323,
326 (CCPA 1981)). The Examiner has offered no evidence
whatsoever that Barber inherently contains the claimed
limitations. And, without Appellants’ disclosure, the recited
claim limitations are considered mere probabilities or
possibilities with respect to Barber.
Secondly, “discovering an optimum value” is an
obviousness argument, which is also unsupported by any
evidence that the claimed limitations are recognized result
effective variables. We are not inclined to dispense with
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