Ex parte HAMAGUCHI et al. - Page 13




          Appeal No. 1997-1240                                                        
          Application 07/881,753                                                      



                    and the scanning frequency of a MUSE                              
                    signal.                                                           




                    We appreciate that the Examiner's position is that                
          Katsumata teaches in figure 11 a box labelled DOUBLE SCAN                   
          SPEED CONVERSION, 1103, which inherently performs the function              
          of Appellants' claimed high definition processing means for                 
          applying a scanning line conversion processing to convert the               
          double rate signal into a signal having the same format as                  
          that of a high definition television signal and a same field                
          frequency as that of a standard television signal.                          
                                                                                     
                    Our reviewing court states that in order "[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.'"  In re Robertson,                
          169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999)                 
          citing Continental Can Co. v. Monsanto Co., 948 F.3d 1264,                  


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