Appeal No. 97-0169
Application No. 08/194,369
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.’ " The Federal Circuit further stated "[i]herency,
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. 169 F.3d at
745, 49 USPQ2d at 1951. From the factual evidence as stated by the Examiner in the
answer, it would not be “necessary” yet it may have been obvious that the some or all of the
functions would be carried out. The Examiner has not made this argument or provided any
line of reasoning why it would have been obvious to one of ordinary skill in the art at the
time of the invention to have plural calibration or reference curves stored in memory and
have the
measurement device automatically determine the constituent components, use that
determination to automatically determine the most appropriate calibration or reference
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