Appeal No. 2000-2282
Application 08/713,046
1784 (Fed. Cir. 1995). See also In re Grasselli, 713 F.2d 731,
739, 218 USPQ 769, 775 (Fed. Cir. 1983). However, the Examiner
must show rationale or evidence tending to show inherency. The
fact that a certain result or characteristic may occur or be
present in the prior art is not sufficient to establish the
inherency of that result or characteristic. In re Rijckaert, 9
F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993). “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).
The Examiner has failed to provide such extrinsic evidence
as to make clear that Bosack’s gateway (bridge) would specify
which packets are to be delivered to a network monitor. In fact,
there is an equally likely possibility that Bosack’s gateway
would deliver all packets to a network monitor, thus making no
specifications as to which packets are to be delivered to a
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