Appeal No. 2000-0770
Application No. 08/631,638
must make clear that the missing descriptive matter is
necessarily present in the thing described in the reference and
would be recognized as such by persons of ordinary skill. In re
Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir.
1999) citing 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.
citing Continental, 948 F.2d at 1269, 20 USPQ2d at 1749. We
find no basis in the disclosure of Robbins for the need for
isolation, nor any other evidence of record, that would support
the Examiner’s assertion of inherency.
We have also reviewed the disclosures of the Stupp and
Takahashi references applied by the Examiner to address the
features of several dependent claims directed to the composition
of particular organic material used for the isolation layer. We
find nothing, however, in either of these disclosures that would
overcome the innate deficiencies of the Robbins and Rostoker
references discussed supra.
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