Appeal No. 2000-2001
Application No. 09/172,732
The Federal Circuit has held “[t]o 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 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.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
for a given set of circumstances is not sufficient." Id. citing
Continental Can Co v. Monsanto Co., 948 F.2d 1264, 1269,
20 USPQ2d 1746, 1749 (Fed. Cir. 1991).
Following the guidelines of the Federal Circuit, we are
not convinced that the Examiner has shown adequate extrinsic
evidence by citing these references that inherency exists in the
use of a ZnCr intermediate layer for use as a layer for enhancing
adhesion between a heat spreader and the substrate. There may
exist a good possibility or even a good probability that ZnCr
having know adhesive characteristic may be used as one of the
many ways or layers which will not only provide a good adhesion
between the heat spreader and the substrate but also will provide
a good heat transfer between the electronic components and the
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