Appeal No. 1999-0913
Application No. 08/723,330
and every element as set forth in the claim is found, either
expressly or inherently described, in a single prior art
reference." In re Robertson, 169 F.3d 743, 745, 49 USPQ2d
1949, 1950 (Fed. Cir. 1999) (quoting Verdegaal Bros., Inc. v.
Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed.
Cir. 1987)). If the 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 reference, and that it would have
been so recognized by persons of ordinary skill. Robertson at
745, 49 USPQ2d at 1950 (quoting 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 745, 49 USPQ2d at
1951 (quoting In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323,
326 (CCPA 1981)).
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