Ex parte HURST et al. - Page 7

          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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