Appeal No. 1997-2439
Application 08/417,701
place the "burden of proof on the Patent Office which requires it to produce the factual
basis for its rejection of an application under section 102 and 103". Citing In re
Warner, 379 F.2d 1011, 1020, 154 USPQ 173, 177 (CCPA 1967).
Furthermore, "[t]o 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 person of ordinary skill.'" In re Robertson, slip Op 98-1270 (Fed. Cir. February 25,
1999), citing Continental Can Co v. Monsanto Co., 948 F.3d 1264, 1268, 20 USPQ2d 1756,
1749 (Fed. Cir. 1991). "Inherency, however, may be established by probabilities or possibilities. The
mere fact that a certain thing may result for a given set of circumstances is not sufficient." Id. citing
Continental Can Co. v. Monsanto Co., 948 F.3d 1264, 1269, 20 USPQ2d 1746, 1749 (Fed. Cir.
1991).
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