Appeal No. 96-4074
Application 08/387,669
further states that "Matsui et al. in view of Watanabe et al. does
not explicitly determine the final center position from multiple candidate center locations of which each
is associated with a score as the applicant does." The Examiner then argues that Matsui's center of
gravity is inherently associated with a score.
"Inherency and obviousness are distinct concepts." W. L. Gore & Associates, Inc. v.
Garlock, Inc., 721 F.2d 1540, 1555, 220 USPQ 303, 314 (Fed. Cir. 1983) citing In re
Spormann, 363 F.2d 444, 448, 150 USPQ 449, 452 (CCPA 1966). Furthermore, "[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 person of ordinary
skill.'" In re Robertson, Slip Op 98-1270 (Fed. Cir. February 25, 1999) citing Continental Can
Co v. Monsanto Co., 948 F.3d 1264, 1268, 20 U.S.P.Q.2d 1746, 1749 (Fed. Cir. 1991).
"Inherency, however, may not be established by probabilities or possibilities. The mere fact that a
certain thing may result for a give set of circumstances is not sufficient." Id. citing Continental Can
Co v. Monsanto Co., 948 F.3d 1264, 1269, 20 U.S.P.Q.2d 1746, 1749 (Fed. Cir. 1991).
Upon a careful review of Matsui, we find that center of gravity is calculated directly by equation
(1) and equation (2) which will give the center of gravity, G (i , j ) coordinate. We fail to find thatG G
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