Ex parte OLSON et al. - Page 4




               Appeal No. 1996-0331                                                                                               
               Application 08/239,942                                                                                             


               John L. Hawkins, (Hawkins), "Clipper Developers Convene," DATA BASED ADVISOR, August 1989,                         
               pages 136 et seq. [hereinafter, pages 1 to 6 as refered to by us in the instant opinion].                          

                      Claims 1 and 31 stand rejected under 35 U.S.C.  102(b) as being anticipated by Hawkins.                    

                      Rather than repeat the positions of appellants and the examiner, reference is made to the Brief,            

               Reply Brief, and the Answer for the respective details thereof.                                                    

                                                           OPINION                                                                

                      In reaching our conclusion on the issues raised in this appeal, we have carefully considered                

               appellants’ specification and claims, the applied reference, the respective viewpoints of appellants and           

               the examiner, and all other evidence of record.  We find, for the reasons that follow, that the feature            

               recited in claims 1 and 31 on appeal, of providing a method of altering an existing data structure using a         

               change definition language, is not taught by the prior art applied by the examiner.  Accordingly, we will          

               reverse the decision of the examiner rejecting claims 1 and 31 on appeal.                                          

                      At the outset, we note that a prior art reference anticipates a claim only if it discloses, either          

               explicitly or inherently, every limitation of the claimed invention.  In re Schreiber, 128 F.3d 1473, 1477,        

               44 USPQ2d 1429, 1431 (Fed. Cir. 1997).  For an unstated element to be found inherent in an                         

               anticipating reference, it must exist as a matter of scientific fact and flow naturally from the elements          

               expressly disclosed in the prior art reference.  Id.  However, inherency may not be established by                 

               probabilities or possibilities regarding what may have resulted in the prior art.  In re Oelrich, 666 F.2d         

               578, 581, 212 USPQ 323, 326 (CCPA 1981).  Furthermore, “[t]he mere fact that a certain thing may                   

                                                                4                                                                 





Page:  Previous  1  2  3  4  5  6  7  8  9  Next 

Last modified: November 3, 2007