Appeal No. 1998-0943
Application No. 08/300,500
Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir.
1987); and In re Wood, 582 F.2d 638, 642, 199 USPQ 137, 140
(CCPA 1978). Thus, it follows that the examiner's rejection
of claims 7 and 9 under 35 U.S.C. § 102(e) is also sustained.
After considering the entirety of the Appellants’
comments directed to the McCain reference, however, we find
Appellants’ arguments to be persuasive with respect to
dependent claim 8. We note that the limitations of dependent
claim 8 are directed to the queuing of plural positional data
points in a pen event buffer in the hand held interface
device. Like Appellants, we do not find such a feature
disclosed by McCain. While the Examiner suggests (Answer,
page 9) the inherent nature of buffers for queuing data
points, no support on the record has been provided to support
such a conclusion. To establish inherency, evidence must make
clear that the missing descriptive matter is necessarily
present in the thing described in the reference and would be
recognized as such by persons of ordinary skill. In re
Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed.
Cir. 1999) citing Continental Can Co. v. Monsanto Co., 948
F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991).
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