Appeal No. 1998-2146
Application No. 08/660,482
cable.” A variation of the second embodiment, shown in Figure 25, also limits movement
between a housing, in one direction, and protrusions 47d, in the other direction.
Noda thus fails to disclose what is claimed. The rejection also fails to the extent of
any basis on the view that structures disclosed by Noda would inherently be capable of
performing the claim 1 “movement” function associated with the “plurality of terminals.” Our
reviewing court has set out clear standards for establishing inherency, which are not
satisfied on this record.
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 therefore agree with appellants that Noda does not support a finding of
anticipation of independent claim 1, nor of claims 2-5 and 7, depending from 1. The other
independent claim at issue (claim 8) sets forth, inter alia, a “plurality of insulation
displacement terminals” similar in scope to the terminals set forth in claim 1. Since
Stephenson does not remedy the deficiencies we note in Noda, we cannot sustain the
section 103 rejection of claims 6, 8, and 9 over Noda and Stephenson.
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