Appeal No. 1999-2794
Application No. 08/597,035
We note that, consistent with appellant's position, the instant specification does not
depict prior art CCD cameras (e.g., Fig. 12) as having a "reset means." We compare
instant Figure 12 with appellant's invention, which includes the reset circuit 62 as shown in
Figure 10.
Our reviewing court has set out clear standards for establishing inherency.
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).
Appellant having contested the finding of inherency, and absent evidence in the
record establishing that a “reset means” is “necessarily present” in the applied prior art,
we cannot sustain the rejection of claim 9, nor that of dependent claim 11. The Office's
burden in establishing inherency has not been met in the instant case. Finally, we cannot
sustain the rejection of claims 9 and 11 for the additional reason that the basic
combination of the APA and Hosokawa is not well founded, as previously noted herein.
CONCLUSION
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