Appeal No. 2000-0380
Application No. 08/816,648
descriptive matter is necessarily present in the thing described in the reference, and that it
would be so recognized by person of ordinary skill." In re Robertson, Slip Op 98-1270
(Fed. Cir. February 25, 1999) citing Continental Can Co. v. Monsanto Co., 948 F.3d
1264, 1268, 20 U.S.P.Q.2d 1746, 1749 (Fed. Cir. 1991). “Inherency, however, may not be
established by probabilities or possibilities. The mere fact that a certain thing may result
for a give set of circumstances is not sufficient." Id. citing Continental Can Co. v.
Monsanto Co., 948 F.3d 1264, 1269, 20 U.S.P.Q.2d 1746, 1749 (Fed. Cir. 1991).
From our review of Knudson and, in particular, our review of column 4, we fail to find
a teaching that Knudson shows an encoder to encode each input group using m/n rate
block coded sequence while impressing a predetermined bit pattern thereon to provide
corresponding output groups of encoded binary bits. While we agree with the Examiner
that the write sequences shown in Knudson provide a sequence of ones and zeros, we fail
to find that Knudson teaches that a predetermined bit pattern is impressed to provide
corresponding output groups of encoded binary data. The Examiner has not shown that
Knudson’s disclosure necessarily teaches that a predetermined bit pattern is impressed
on an m/n block coded sequence. We remind the Examiner that inherency may not be
established by probabilities or possibilities.
In view of the foregoing, the decision of the Examiner rejecting claims 25 through 28
and 44 through 47 is reversed.
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