Appeal No. 2002-0614
Application No. 08/976,888
Walls provides for an indicator to be set to indicate remote file
location, a pointer to that file is already inserted by generator
234 (col. 19, lines 52-56) which means that the file location is
known prior to retrieving the file. Furthermore, “[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
person of ordinary skill.’” In re Robinson, 169 F.3d 743, * 49
USPQ2d 1949, 1950-1951 (Fed. Cir. 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. 948 F.2d at 1269, 20 USPQ2d at 1749. Here the
examiner has not pointed to, nor do we find, any teaching in the
prior art that would disclose or fairly suggest that existence of
the “Remote Location” field necessarily indicates the presence of
the claimed “means for evaluating the command to determine a
first type file of the first file” after a command to access a
first file is received. In fact, since Walls provides for
pointers to the files that are already accessed, there is no need
for determining the location of he file. Accordingly, we find
that the Examiner has failed to meet the burden of providing a
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