Ex parte VAN DEN BROEK et al. - Page 7

          Appeal No. 1997-4442                                                         
          Application 08/353,040                                                       

               Appellants also argue that de Wit does not mention                      
          trimming, whereas claim 6 recites that the first and second                  
          path portions are trimmed so that the resistor has a desired                 
          resistance value and a desired TCR (Br6; RBr2 n.1).  The                     
          Examiner responds that "[t]rimming resistors to achieve a                    
          desired value is extremely old and well known in the art and                 
          one of ordinary skill in the art would [have] realize[d] that                
          trimming may be done on the resistor of de Wit" (EA5).  That                 
          something "may" be done does not establish inherency necessary               
          for anticipation.  Inherency requires a certainty that an                    
          undisclosed function or characteristic is necessarily present.               
          "The mere fact that a certain thing may result from a given                  
          set of circumstances is not sufficient [to establish                         
          inherency.]"  In re Oelrich, 666 F.2d 578, 581-82,                           
          212 USPQ 323, 326 (CCPA 1981) (citations omitted) (emphasis                  
          added).  Thus, the anticipation rejection of claims 6 and 2                  
          based on de Wit is reversed for the additional reason that                   
          there is no teaching of trimming.                                            

               Claims 6 and 2 - de Wit and APA                                         

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