Appeal No. 1997-1131
Application No. 08/395,119
to dispense with proof by evidence when the proposition at issue
is not supported by a teaching in a prior art reference, common
knowledge or capable of unquestionable demonstration. Our
reviewing court requires this evidence in order to establish a
prima facie case. In re Knapp-Monarch Co., 296 F.2d 230, 232,
132 USPQ 6, 8 (CCPA 1961); In re Cofer, 354 F.2d 664, 668, 148
USPQ 268, 271-72 (CCPA 1966).
Further, to the extent that the Examiner is relying on the
unstated principle of inherency to support the contention that
the claimed symbol defining boxes and border defining elements
are disclosed by the LED matrix of Bailey, we reject this
contention as well. To establish inherency, evidence must make
clear that the missing descriptive matter is necessarily present
in the thing described in the reference and would be recognized
as such 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, 1268, 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.” Id. citing Continental, 948 F.2d at 1269, 20
USPQ2d at 1749.
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