Appeal No. 96-2997
Application 08/179,458
We find, for the reasons that follow, that the feature recited in claims 1, 5, 6, 8, 12, and 13 on appeal,
of providing slow motion by dilating a segment of frames and replicating some frames of the segment
more times than other frames, is neither taught nor would have been suggested by the prior art applied
by the examiner. Accordingly, we will reverse the decision of the examiner rejecting claims 1, 5, 6, 8,
12, and 13 on appeal.
Rejection of Claims 1, 5, 8, and 12 Under 35 U.S.C. § 102(b) Over Poulett
A prior art reference anticipates a claim if it discloses, either explicitly or inherently, each and
every limitation of the claimed invention. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429,
1431 (Fed. Cir. 1997); Akzo v. U.S. International Trade Commission, 808 F.2d 1471, 1479, 1
USPQ2d 1241, 1245 (Fed. Cir. 1986), cert. denied, 107 S.Ct. 2490 (1987); In re Donohue, 766
F.2d 531, 533, 226 USPQ 619, 621 (Fed. Cir. 1985). For an unstated element to be found inherent
in an anticipating reference, it must exist as a matter of scientific fact and flow naturally from the
elements expressly disclosed in the prior art reference. Hughes Aircraft Co. v. United States, 15 Cl.
Ct. 267, 271, 8 USPQ2d 1580, 1583 (Cl. Ct. 1988). However, inherency may not be established by
probabilities or possibilities regarding what may have resulted in the prior art. In re Oelrich, 666 F.2d
578, 581, 212 USPQ 323, 326 (CCPA 1981). Furthermore, “[t]he mere fact that a certain thing may
result from a given set of circumstances is not sufficient.” Hansgirg v. Kemmer, 102 F.2d 212, 214, 40
USPQ 665, 667 (CCPA 1939)(emphasis in original); see also Ex parte Skinner, 2 USPQ2d 1788,
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