Appeal No. 1998-0538
Application 08/424,634
purposes anyway.
Finally, the examiner is incorrect in asserting on pages
4 and 5 of the answer that "[i]t is assumed to be inherent to
Nagase '816's disclosure" that certain features are present.
"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 person of ordinary skill."
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20
USPQ2d 1746, 1749 (Fed. Cir. 1991). "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." Id. at 1269, 20 USPQ2d at
1749 (quoting In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323,
326 (CCPA 1981)).
In view of the foregoing, we have reversed the examiner's
rejection of independent claims 1 and 4. As such, we also
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