Appeal No. 2001-2601
Application No. 09/167,897
other words, Appellant's claimed invention requires the use of a
table to link unique electronic price label addresses with unique
groups.
We note that the Examiner has not been able to point to any
teaching within Briechle that teaches these limitations. The
Examiner seems to be arguing that the suggestion in column 15,
lines 7-12, would inherently teach these limitations. However,
for the Examiner 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. In
re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950 (Fed. Cir.
1999) citing Continental Can Co. v. Monsanto Co., 948 F.3d 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., 948 F.3d at 1269, 20 USPQ2d at 1749.
Upon our review of Briechle, we fail to find that the
Examiner has met this burden. We fail to find that the Examiner
has shown that Appellant's claimed invention is necessarily
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