Appeal No. 2001-1855
Application No. 08/897,440
Appellants also argue that Wolf does not teach that the stored image files are
registered as pattern data for use in editing an image. “Rather, Wolf merely provides
that objects edited can be stored and retrieved from a memory.” (Brief at 18.) The
examiner responds (Answer at 8) that Wolf’s invention does teach registering the
designated part of the image data as pattern data for use in editing an image and refers
back to the statement of the rejection.
We find that, consistent with appellants’ arguments, Wolf discloses storage and
retrieval of image files in the section that the examiner asserts the teaching to be found
(i.e., col. 9, ll. 32-56; Figs. 4 and 5). Since Wolf does not expressly disclose the
teaching attributed to it, the rejection can only stand if Wolf inherently discloses
registering image data “as pattern data for use in editing an image,” as required by each
of independent claims 1 and 8.
Our reviewing court has set out clear standards for establishing inherency.
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)
(citations omitted).
In the instant case, the examiner has not provided evidence that registering
image data as pattern data for use in editing an image is necessarily the same as the
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