Appeal No. 2000-0949
Application No. 08/721,505
axis and spaced by a predetermined distance from the terminal edge." (See answer at
page 3.) Appellant argues that Holdgrafer does not teach the step of "determining a width
(W)" and a "longitudinal axis of the tip portion of a selected lead finger" as recited in claim
14 and claim 5. (See brief at pages 7-8.) Appellant identifies the language in Holdgrafer
which the examiner cites generally and concludes that "Holdgrafer does not actually
determine the longitudinal axis of a lead finger." (See brief at page 8.) From our review
of Holdgrafer, we are not certain whether Holdgrafer determines the longitudinal axis.
While we do not necessarily agree with appellant that Holdgrafer does not determine the
longitudinal axis, we disagree with the examiner that the language of Holdgrafer means the
same thing as the claim limitation.
"To 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.2d 1264, 1269, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991).
"Inherency, 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."
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