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.
Obviousness
Claims 6 and 2 - de Wit and APA
- 7 -
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