Appeal No. 1998-1819
Application No. 08/364,972
improvement prospectively. While Good's system might indeed be improved if one were
to apply the teachings of Sakamoto, such an assumption would be mere speculation.
Rejections under section 103 cannot be founded on speculation.
We therefore do not sustain the rejection of claim 1, nor claims 2 and 21,
depending from 1, under 35 U.S.C. § 103 over Good and Sakamoto. Instant claims 3 and
7 add phase delay compensation to the combination, which includes sensing one of a
tensive and a compressive state of the suspension. Aside from the fact that the rejection
falls short for the reasons we have identified with respect to claim 1, we agree with
appellants that the deemed "inherency" (Answer at 6) of phase delay compensation
represents misallocation of the burdens in the patent examination process. Our reviewing
court has set out clear standards for establishing inherency, which have not been met in the
instant case.
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 do not sustain the rejection of independent claims 3 and 7, nor of claims 4, 10-
12, and 22, each depending from claim 3 or 7. We also reverse the rejection of dependent
-7-
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