Appeal No. 1997-4438
Application No. 08/173,431
are inherently disclosed in the cited reference. The examiner
also argues (Answer, pages 9 and 10) that based on applicant’s
admission it would have been obvious at the time the invention
was made to correlate screen positions with known methods. To
establish inherency, any extrinsic evidence relied on by the
examiner “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); In re
Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981).
According to appellant (Brief, page 11), “‘It is elementary
that an anticipation rejection requires a showing that each
limitation of a claim must be found in a single reference,
practice or device.’ In re Donohue, 226 USPQ 619, 621 (cites
omitted) (CAFC, 1985).” In essence, appellant is of the
opinion (Brief, page 11) that Hyperbole “is inadequate to form
the basis for an anticipation rejection.” In light of
appellant’s admission (Specification, page 12), the publicly
displayed works would not have worked without the missing
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