Appeal No. 98-0595
Application 08/461,806
F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir.), cert. denied,
484 U.S. 827 (1987).
Inherency 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.
Continental Can Co. USA, Inc. v. Monsanto, 948 F.2d 1264,
1268-69, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991).
The decision of the Court of Appeals for the Federal
Circuit in In re LeGrice, 301 F.2d 929, 938-39, 133 USPQ 365,
373-374 (CCPA 1962), cited by the examiner, is not apposite.
That case concerns the scope of enabling disclosure of a prior
art reference for purposes of an anticipation rejection. The
underlying premise was that the prior art reference already
describes what the appellant’s claim recites. The question in
doubt was whether one with ordinary skill in the art would
have known how to make that which has been described. In this
case, the issue is not whether one with ordinary skill in the
art would have known how to put a spindle synchronization
command on a common bus if directed to do so, but whether the
prior art Lewis reference describes the goal or objective of
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