Appeal No. 1998-2556
Application 08/571,044
itself based on motion estimation, and not the noise. We
agree with appellants that estimating motion compensated
picture information is not a noise estimate, nor does it
inherently involve a means for estimating noise.
If a 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). “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). The record before us does not
support the examiner’s assertion that Grotz inherently has a
means for estimating noise as recited in independent claim 1.
Since all the recitations of claim 1 are not present in the
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