Appeal No. 2000-2100
Application No. 09/101,371
that “[t]o merely presume the possibility of identical currents in
the bond wires of Masuda is not sufficient to establish inherency.”
We agree with appellants’ arguments. An inherency teaching
must be necessarily present in the structure described in the
applied reference. Continental Can Co. v. Monsanto Co., 948 F.2d
1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991). The examiner
must provide extrinsic evidence, rather than an opinion, that makes
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.” In re Robertson, 169
F.3d 743, 744-45, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999).
Inherency “may not be established by probabilities or
possibilities.” In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323,
326 (CCPA 1981). In summary, the obviousness rejection is reversed
because we agree with appellants that Masuda does not disclose the
same structure as the disclosed and claimed invention, and that
neither the admitted prior art nor Masuda teaches or would have
suggested to one of ordinary skill in the art two symmetrically
shaped bond wires carrying equal values of current.
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