Appeal No. 1997-1004
Application No. 08/095,479
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]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. 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).) Clearly, from the factual evidence as presented
by the examiner and the evidence presented by appellant in the Hashimoto declaration, it
would not be “necessary” that the pressure applied to the plain paper be in the range of “1
2 2
Kg/cm to 300 Kg/cm " as set forth in the language of claim 1. The examiner further states
that “Suzuki does not specify particulars as to the type of ink, paper, pressure or time used.
One of ordinary skill in the ink jet art, seeking to make and use the Suzuki method would be
motivated by the lack of such particulars to employ well known specifics found in the ink jet
art. The secondary references . . . are cited to evidence the claimed ink, paper, pressure,
time, etc. are known.” (See answer at page 5.) We disagree with the examiner.
Appellants
argue that the examiner is “picking and choosing” from the references and using the
claimed invention as a template to reconstruct the claimed invention from the prior art
references. (See brief at page 18.) We agree with appellants.
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