Appeal No. 1998-2494
Application No. 08/521,363
814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir. 1987)(disclosed process held to
anticipate claimed invention, even if inventor of disclosed process did not recognize
inherent property). However, our reviewing court has set out clear standards for
establishing 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).
We can conclude from appellants’ specification that there is some degree of
unpredictability in the expectation of measured fluctuation field, and counsel for appellants
stressed this unpredictability at the oral hearing. As shown in Table 2 (specification, page
11), a magnetic film composed of CoCr Pt within the scope of claim 1 (fluctuation field
20 8
not less than 15 oersteds) corresponded to a media coercivity of 2654 oersteds. Yet, a
magnetic film of the same composition in the same table but outside the scope of claim 1 -
- with a fluctuation field of 14.9 oersteds -- corresponded to a media coercivity of 2756
oersteds, higher than that associated with the material within the scope of claim 1.
On the other hand, we might conclude from Table 1 (specification, page 9) that an
increase in coercivity of the media corresponds in general to an increase in fluctuation field
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