Appeal No. 96-3323
Application 08/022,922
database” would have been required in the prior art systems as described by the
Examiner. The Examiner's assertion that the “assembly structure database” would have
been “necessary to interface all the parts into an integral working whole” is mere
speculation. We disagree with the Examiner that the “assembly structure database” would
have been “necessary” if it is not taught or suggested by the prior art references. 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 “[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.’ " citing Continental Can Co. v. Monsanto Co.,
948 F.2d 1264, 1268, 20 U.S.P.Q.2d 1746, 1749 (Fed. Cir. 1991). The Federal Circuit
further stated "[i]nherency, 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 quoting In re Oelrich, 666 F.2d 578, 581, 212 U.S.P.Q. 323, 326 (C.C.P.A. 1981).
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