Appeal No. 1998-0180
Application No. 08/471,309
[and arguments are not persuasive when based on a] drawing obviously never intended to show the
dimensions of anything.").
Appellant also contends, as expanded on page 13 of the Reply Brief, that successive pairs of
coaxial waveguides that propagate TE and TE modes (as shown in Figure 7 of Liu) do not11 21
necessarily have the same cutoff frequencies -- and hence the same “dispersions” -- but the cutoff
frequencies are a separate design consideration. The examiner contends otherwise; that since the TE11
and TE21 frequencies are disclosed as being the same in coaxial pairs in Figure 7 of Liu, then the
dispersions are the same or “approximately the same.” (See Final Rejection, page 3 and Answer, page
7.)
Since Liu does not speak of “dispersions,” or disclose actual cutoff frequencies of waveguides
54 and 56, the examiner’s argument for inherency appears to be based on an allegation that is disputed
by appellant. Our reviewing court, however, requires much more than allegation to establish inherency.
To 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." "Inherency, however, may not
be established by probabilities or possibilities. The mere fact that a certain thing may
result from a given set of circumstances is not sufficient."
In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999)(citations omitted).
Here, we do not have any extrinsic evidence in support of the examiner’s position that the
“dispersions” in the relevant waveguides in the reference are necessarily the same or approximately the
same. We have considered the examiner’s position, as set out in the Final Rejection and Answer, but
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