Appeal No. 1997-2848
Application No. 08/444,106
and that of the applied prior art. In the alternative, the
Examiner
further asserts the obviousness to the skilled artisan of
obtaining the claimed inequalities defining the recording head
gap length through routine experimentation and optimization
since Appellants have not provided a showing of criticality of
such inequalities. We find neither contention of the Examiner
to be well founded. The Examiner has provided no support on
the record for the conclusion that the resulting combination
of Koyama and Suyama would have an identical structure to that
claimed, let
alone any reasoning as to why any such resulting structure
would inherently have the claimed inequalities even if the
structure were identical. 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
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