Ex parte BANERJEE et al. - Page 11




          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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