Appeal No. 2000-0428
Application No. 08/667,291
grey scale.” The color chips on each chart (Fig. 4) are of “equal tint density,” with each
successive plane offering colors “darker in density.” Col. 7, l. 62 - col. 8, l. 6.
The examiner argues (Answer at 7) that Scott’s teaching of the progression
corresponding “generally to the grey scale” means that each level is of “substantially the
same” intensity or luminance. However, we note that claim 5 does not recite each
luminance level consisting of colors of “substantially” uniform luminance. As disclosed
and claimed, the instant invention requires colors having the same luminance with
respect to each of the levels (34; Fig. 1).
Scott teaches planes of colors based on equal tint density. Although the planes
described by Scott may generally correspond to the uniform luminance levels as
claimed by appellants, we do not find suggestion in Scott for the requirements of claim
5 that appellants argue are missing from the references.
To the extent that the rejection may be based on a view that Scott inherently,
although not expressly, describes planes consisting of colors of uniform luminance, we
note that our reviewing court requires more than speculation.
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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