Appeal No. 96-3040
Application 08/135,650
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).
We find the examiner’s conclusion that the temperature coefficients of Cho’s
transistor 42 and current source 41 could be of opposite polarity to be based on pure
speculation which is not supported anywhere within the disclosure of Cho. Therefore, we
do not sustain the rejection of claim 3.
In summary, we have sustained the examiner’s rejection under 35 U.S.C. § 102 with
respect to claims 1, 2, 4-8, 30, 31 and 36, but we have not sustained the rejection with
respect to claim 3. Therefore, the decision of the examiner rejecting claims 1-8, 30, 31
and 36 is affirmed-in-part.
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
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