Appeal No. 1998-2918
Application No. 08/508,874
to the meaning of terms employed and assumptions as to the scope of the claims. In re
Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962). We enter a new ground
of rejection against the claims under 37 CFR § 1.196(b), infra.
Although we have not considered the merits of the section 103 rejection, we
observe that the statement of the rejection lacks sufficient detail to set out a prima facie
case of obviousness. In the event of further prosecution and subsequent appeal, a
rejection over the prior art in any Examiner's Answer must compare each limitation of
the claims with the prior art. See MPEP § 1208 (Seventh Edition, Rev. 1, Feb. 2000).
This is particularly important where, as in the instant case, the rejection relies on the
doctrine of inherency.
We further note that, in meeting the Office's burden in establishing inherency,
extrinsic evidence (e.g., an additional, explanatory reference) to establish that the
missing descriptive matter is necessarily present is preferred.
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).
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