Appeal No. 1998-1343
Application No. 08/154,695
§ 1.192(a).
"It is axiomatic that anticipation of a claim under § 102
can be found only if the prior art reference discloses every
element of the claim." In re King, 801 F.2d 1324, 1326, 231
USPQ 136, 138 (Fed. Cir. 1986). See also Lindemann
Maschinenfabrik v. American Hoist and Derrick, 730 F.2d 1452,
1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
If the prior art reference does not expressly set
forth a particular element of the claim, that
reference still may anticipate if that element is
"inherent" in its disclosure. 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." Continental Can Co. v. Monsanto
Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed.
Cir. 1991).
In re Robertson, 169 F.3d 743, 49 USPQ2d 1949, 1951 (Fed. Cir.
1999). "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." Continental Can, 948 F.2d at 1269, 20 USPQ2d at
1749 (quoting In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323,
326 (CCPA 1981).
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