Ex parte CLEMENTE - Page 4

               Appeal No. 1997-4038                                                                                               
               Application 08/337,550                                                                                             

               "using said heat sink temperature, the power dissipated in the power semiconductor device, the                     

               temperature of the analog integrated circuit and the thermal resistances between the power                         

               semiconductor device and the analog integrated circuit, between the power semiconductor device and                 

               the heat sink, and between the analog integrated circuit and the heat sink to determine the temperature            

               of the discrete power semiconductor device," as recited in Appellant's claims.                                     

                      On page 4 of the answer, the Examiner acknowledges that Young does not disclose a                           

               copackaged power semiconductor and analog circuit, nor does Young explicitly state the thermal                     

               resistances needed to determine temperature.  The Examiner seems to reason that if one of ordinary                 

               skill in the art were to copackage a power semiconductor and analog circuit that the method and                    

               apparatus as claimed by the Appellant would have been inherent.                                                    

                      "Inherency and obviousness are distinct concepts."  W.L. Gore & Associates, Inc. v.                         

               Garlock, Inc., 721 F.2d 1540, 220 USPQ 303, 314 (Fed. Cir. 1983) citing In re Spormann, 363                        

               F.2d 444, 448, 150 USPQ 449, 452 (CCPA 1966).  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 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.3d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991).                                

               "Inherency, however, may not be established by probabilities or possibilities.  The mere                           


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