Appeal No. 1997-1425
Application No. 08/520,228
equivalents at the time the invention was made, one of
ordinary skill in the art would have found it obvious to
substitute the detection devices of the other references in
combination for Oshida[’s] generic teaching of detecting the
paper thickness and roughness.” (Final Rejection-page 5).
Appellants argue that Oshida does not include any sensors
of any type (brief-page 6). The Examiner responds that
obviously or inherently detectors must be used in Oshida to
determine the characteristics of thickness and roughness of a
piece of paper (answer-page 3).
If the prior art reference does not expressly set forth a
particular element of the claim, that reference still may
anticipate if that element is "inherent" in its disclosure.
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."
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
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