Appeal No. 2000-1257
Application 08/861,350
Nothing in Nishiuchi teaches nor suggests the
importance of the permissible decrease of the Strehl
intensity due to spherical aberration. Nothing in
Nishiuchi refers even obliquely to permissible decrease
in Strehl intensity; rather, a full correction is
attempted.
There is no discussion at all in Nishiuchi of Strehl
intensity. Therefore, the examiner's assertion of inherency
cannot be met in any manner. There is nothing in this reference
that necessarily may interpreted by the artisan as teaching or
indicating the overall formulaic representation of the
determination of the value of "2d" as set forth in the claims on
appeal let alone the Strehl intensity. Inherency may not be
established by probabilities or possibilities since inherency
requires a teaching must be necessarily present in the applied
prior art. Continental Can Co. v. Monsanto Co., 948 F.2d 1264,
1269, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991) relying on In re
Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981). These
findings are consistent with a more recent case from our
reviewing court, In re Robertson, 169 F.3d 743, 745, 49 USPQ2d
1949, 1950-51 (Fed. Cir. 1999). Therefore, the rejection of
claims 11-14 and 17-23 as being anticipated by Nishiuchi is
reversed.
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